How to File a Domain Name Dispute

By Josh Gerben, Esq.

The protections that trademarks supply to the owner’s business and brand are extremely advantageous. They have become even more valuable in a marketplace that is increasingly present online, removing regional and industry boundaries that may have previously been in place. Additionally, companies that take part in this virtual exchange use their websites as platforms to offer their goods and services for sale, and the domains at which they are registered are often integrated into the business branding as well. Frequently, a company’s name or one of their registered trademarks is incorporated into the website domain as well.

In a rising number of circumstances, businesses are finding that domain names utilizing their company information have already been taken–sometimes, this is intentionally done by a third party looking to profit off of the domain’s sale to its rightful owner. When this happens, trademark owners have the right to take these domains from those who are simply ‘cybersquatting’, or retaining the domain name in an effort to profit from it.

To learn more about Domain Names and UDRP Disputes, read our complete breakdown.

How is a dispute filed?

When a domain name is registered, the Uniform Domain-Name Dispute Resolution Policy, also known as UDRP, is a mandatory arbitration process that must be adhered to by the owner. It is this policy that allows trademark registration owners to file complaints against domains that are improperly using their mark and, if the dispute is successfully resolved, the domain can be transferred to the rightful trademark owner.

If you believe that someone is retaining a domain name that infringes upon your registered trademark in bad faith or in some other way violates trademark law, you are able to take legal action to recover that domain. It is always wise to consult an experienced trademark attorney first. After engaging with an attorney, here are the steps to file a dispute:

1. Choose a service through which to file the complaint.

First, the complainant must choose the service through which they will file the complaint, such as the World Intellectual Property Organization. Once selected, they will also have to decide the number of panelists that will review their complaint. The filing fees for a UDRP complaint vary depending on the resolution service chosen and the number of panelists appointed.

2. Provide proof that the domain name infringes on your registered trademark.

Each complaint has three mandatory elements that the complainant must prove in order to be successful: the trademark and domain are confusingly similar, why the current domain holder has no rights in the domain, and that the domain registration was done in bad faith. Without these key points, the chances of the complainant’s success are slim.

3. The complaint is reviewed and sent to the accused domain holder.

Once the complaint is filed with the arbitration service, it undergoes initial review and, once approved and paid, the complaint is sent to the accused domain holder via mail and email.

4. The opposing party has 20 days to respond to the complaint.

A response is due from the opposing party within twenty days. In the event that no response is received, the panel will proceed with an evaluation of the complaint regardless. If one is received, the panel reviews the response and forwards its final decision regarding the matter to the arbitration service within two weeks. This entire process typically takes four to five months.

5. Both parties are notified of the final decision.

The complainant and respondent are notified of the final decision within three days. If the complainant has prevailed, the registrar of the domain will be instructed to modify or release the domain name. If the complaint loses, the domain remains in the custody of the original registration owner.

While filing a complaint through UDRP is not the equivalent of a lawsuit, private arbitration has many similar nuances and challenges that may arise during litigation. If you believe that a domain name registered by another party may infringe upon your trademark or business, reach out to an attorney at Gerben IP for a free consultation. These matters are often best handled with the assistance of an experienced attorney who can help you understand your trademark rights and assist with navigating enforcement claims, as well as ensure that any subsequent action has the greatest chance of success.

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Josh Gerben, Esq.

Josh Gerben, Esq. is the founder and principal of Gerben IP. In 2008, Mr. Gerben started the firm to provide high-quality trademark services at reasonable prices. Today, he is recognized by the World Trademark Review as a top trademark filer, having registered over 7,500 trademarks. The contents of this blog are for informational purposes only and may not be relied on as legal advice.