Justin McNaughton, Esq.
“Sooner or later, everything old is new again.” – Stephen King, The Colorado Kid.
In the early 2000’s,
Razr phones and Internet cybersquatting
was everywhere. Search engines had not yet become sophisticated enough to
ignore cybersquatting and Razr phones were useless in that realm without mobile
browsing, and yet it seemed like every company had a problem with people
registering misspellings of their websites.
The options for dealing with cybersquatting leading up to that time were
about as fun as dialup internet; sometimes you could find what you needed but
man it took forever.
The Uniform Domain-Name Dispute-Resolution Policy (UDRP), a
masterpiece in hyphenation-practice, was
October 24, 1999. That same year,
Consumer Protection Act was adopted to provide additional remedies to U.S.
trademark owners. The next ten years were filled with UDRP proceedings; clients
of all sizes spent money recovering these domain names from unscrupulous
actors. All of the pent up frustration
of the prior decade was unleashed on these URL pirates. Then, it kind of
stopped. Sure there were still many,
many of these proceedings every year, but I’d say they fell a bit out of
For those of you that don’t remember, UDRP is a proceeding
that was set up through the Internet Corporation for Assigned Names and Numbers
(ICANN). It is a relatively easy
arbitration proceeding that a trademark owner could use to recover an
infringing domain name. It didn’t work for everything, but in the situations
where is worked, it resolved the difficulty of resolving certain website disputes
when the squatter lives somewhere in
Recently, many of our clients are seeing a recent resurgence
and domain squatting.
Here is a quick refresher on UDRPs (you can study the long version on
The proceeding is done entirely on paper. The proceeding is conducted by an independent
panel. The result is typically transfer of the domain
name (if merited). Grounds for transfer are: (1) the challenged
domain name is identical or confusingly similar to the complainant’s trademark;
(2) the owner of the challenged domain name has no legitimate rights in it; and
(3) the challenged domain name was registered in and is being used in
bad faith. If filed through the World Intellectual Property Organization,
the filing fee is typically
$1500. Typically a decision issues within 60 days of
filing. The registrar implements the transfer (if
awarded) in accordance with the decision.
The key consideration is whether or not the domain name was
registered in bad faith. For example, if the domain name was registered before
you obtained rights in the trademark, it is unlikely that you will be able to
show it was registered in bad faith.
On the other hand, here are some examples of bad faith:
The domain owner registers the domain and then
tries to sell it to you for a bunch of money. The domain name is being used to disrupt your
business. The domain is actively being used to create
confusion. The website at the domain copies your content. The domain forwards to a competitor’s website.
Of course every situation is different, but sometimes a UDRP
proceeding is the fastest, cheapest, best way – even in today’s flip-phoneless
It might just be time to dust off your old iPod, take back a
pesky domain name, and order an all
Razr Phone. And you wouldn’t even be
surprised to find out that Stephen King’s book is being released
again in May 2019 with all new illustrations.
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