Domain Name and UDRP Disputes – A Definitive Guide

By Eric Perrott, Esq. and Sophie Edbrooke, Esq.

Domain names are a business investment – they can drive traffic to your business, cost you thousands of dollars, and are very important to defend. So how do you protect them? You can take some proactive measures to police infringement on your domain names, but you can also stop infringers through processes like Uniform Domain-Name Dispute Resolution Policy Proceedings (“UDRP”).

When is a UDRP an appropriate legal proceeding to file?

If you’ve ever typed in a domain name wrong, such as YAHOOO.COM, YHAOO.COM, or YHOO.COM instead of YAHOO.COM, these often will redirect back to the site you intended to search for, however, sometimes they don’t. Cybersquatters are becoming savvy about the marketing behind big brands and their domain names, and they can do a few things with these confusingly similar domain names.

1. They can redirect the URL to their own similar business.
   Ex: frutniture.com going to their own online furniture store
2. They can use the domain to advertise similar services and profit from third-party links.
   Ex: fruniture.com advertising links to competitors of the original domain
3. They can create a similar scam website, so consumers believe they’re shopping on your website and share personal information.
4. They can try to sell the domain back to you to prevent them from doing these things.

Unfortunately, mixing up the spelling of words is not the only way people can infringe on your domain name. The following are some of the most popular ways cybersquatters can infringe on your domain names:

1. Adding letters to the domain name, either for a typo or an errant keystroke.
   Ex: ggerbenlawfirm.com or gerbenlawifirm.com instead of gerbenlawfirm.com
2. Omitting words from the domain name that consumers may not include.
   Ex: gerbenlaw.com
3. Inserting numbers or symbols instead of letters.
   Ex: g3rbenlawfirm.com
4. Creating a confusingly similar domain name that consumers might believe is associated.
   Ex: gerbenlegalservices.com
5. Changing the top-level domain (Ex: .com, .org, .us) to another top-level domain (Ex: .net, .io, .de)

If a cybersquatter is doing one of the foregoing items, a domain dispute or UDRP can be a very effect legal proceeding to recover the relevant domain.

How to file a UDRP proceeding to resolve a domain dispute

Proactive measures, such as registering some of the most common typos or the .com and .org of your domain name, are a good start to policing your domain name; however, registering each and every possible infringing domain is unrealistic. Infringement can happen, and you can file UDRP Proceedings to stop it.

1. What is a UDRP Proceeding?

A UDRP Proceeding or Uniform Domain-Name Dispute Resolution Policy Proceeding is a set of rules created by the Internet Corporation for Assignment Names and Numbers (ICANN), a not-for-profit partnership formed in 1998 to coordinate the internet’s naming conventions. All registrars, who control the registration of domain names, are subject to the UDRP, which is why it’s a powerful tool for brand owners and domain name holders.

A UDRP Proceeding is a private, binding arbitration proceeding. The arbitration is overseen by either one arbitrator or a panel of three impartial arbitrators and differs from a lawsuit because it involves less evidentiary processes and is a much quicker process. Also, arbitration is typically not appealable, however, UDRP Proceedings can be appealed via a federal lawsuit.

2. Where can I file a UDRP Proceeding?

As ICANN is the organization responsible for creating the UDRP Rules, an entity can file a UDRP Proceeding in any one of the multiple ICANN-approved forums. Some of these service providers are location-specific, but some, such as WIPO and National Arbitration Forum can arbitrate all top-level domains.

A complete list of ICANN-approved service providers can be found here.

Some of the differences between these providers include the supplemental rules they each follow, the cost to file, and the timeline for each arbitration. Some providers, such as WIPO and National Arbitration Forum, even offer Model Complaints and Model Responses for people who wish to file their own complaints without the help of counsel.

3. What do I need to include in a UDRP filing?

Despite having a model complaint or online form, a UDRP is still a complex legal proceeding. No matter which forum you file the UDRP Proceeding, there are three elements each complainant must prove.

1. You must prove that the domain name is infringing on your trademark because it is identical or confusingly similar.
2. You must prove that the infringing party has no legitimate right to use this mark (for example, if the USPTO granted them a similar trademark and you disagree, the infringer still has legitimate rights in the mark).
3. You must prove that the domain name is registered and being used in bad faith.

The third factor is the hardest to prove, as you are attempting to prove the infringer’s state of mind. However, ICANN has provided examples that are evidence of “bad faith.”

1. The infringer has purchased the domain for the sole purpose of reselling it to you or to your competitor for more than they paid (domain squatting and reselling).
2. The infringer is your competitor, and they purchased the domain to disrupt your business.
3. The infringer is using the confusingly similar domain to attract users for their own commercial gain (hosting third-party advertisements for similar services as yours, hosting a scam website in order to collect personal information, or redirecting the infringing domain to their name where they sell similar products).

Overall, proving these three elements of a UDRP Proceeding and then proving bad faith can be complicated, but it is essential for your case. Consider hiring an attorney to help ensure each prong is properly argued.

4. What’s the cost of filing a UDRP?

Due to the private nature of a UDRP proceeding, you (the trademark owner) are responsible for paying the arbitration fees. These fees can be expensive depending on how many arbitrators you’d like to review your case, the forum in which you decide to arbitrate, and how many domain names you’re claiming. The fees for two of the most common service providers are below:

WIPO Arbitration and Mediation Center:

National Arbitration Forum:

While these fees can look expensive, and you may be offered the infringing domain name for a few hundred dollars – it’s a slippery slope to start giving in to domain name squatters. As you saw, there are countless ways to squat on trademarks, and purchasing a dozen $200-$500 domain names from these squatters can add up. On the contrary, if you show that you’re willing to police your domain name through UDRP Proceedings, it becomes a losing battle for infringers to continue to buy domain names only to be later transferred.

Domain Name Disputes FAQs

Here are some questions that we receive on a regular basis about domain name disputes and UDRP proceedings:

1. How long does a UDRP take from filing to resolution?

A UDRP Proceeding is much faster than a federal court case, which may take years. Depending on the forum you file in and the number of filings by each party, a proceeding can be completed as quickly as six weeks to two months from filing to transfer.

2. There are multiple “domain name disputes” listed on these websites, so why would you file a UDRP Proceeding over URS?

While the UDRP may be more costly than the newer URS (or Uniform Rapid Suspension System) proceeding, the UDRP is unique and more of a final solution because the domain name can be transferred back to the original owner of the trademark. In a URS dispute, the domain name will only be suspended for up to two years, and then if the cyber squatter is determined enough, they can reclaim the infringing URL. The URS is cheaper and faster, so it can be useful in emergencies, but for a full resolution and more complete policing strategy, the UDRP is the better enforcement mechanism.

3. Is using the UDRP mandatory?

No trademark holder has to police similar domain names. However, the goodwill and reputation associated with your trademark are directly related to how consumers interact with anyone they believe is associated with your trademark. Therefore, while it might seem unnecessary to police an online presence if you don’t have a website if consumers are interacting with a website and getting scammed or being ignored, they may be less likely to patronize your actual goods and services.

4. I own the trademark do I get all domains associated with my trademark?

A common question is if you own the domain name do you own the trademark, and vice versa? As you saw earlier, owning a single trademark runs into a multitude of possible domain names, so for one entity to automatically own all the top-level domains, misspellings, and unique interpretations of their mark is unfeasible. Additionally, you can only own the trademark rights for what you offer to consumers. If two businesses offer completely different services under the same name, there is no fair resolution as to who should own that domain. That’s why it’s essential for you as a trademark owner to acquire all the relevant domain names you may need when you begin offering your services and hopefully avoid legal proceedings afterward.

Winning a Domain Dispute Through a UDRP Proceeding: A Case Study

In September 2022, Gerben IP won a dispute against a cybersquatter, who registered the domain: ggerbenlaw.com.

We are now the proud owners of that extra “G” – the full decision can be read here.

So how did we become aware of someone else registering a domain name that was confusingly similar to ours? Gerben IP uses software that alerts us anytime someone registers a domain with “GERBEN” in it. Gerben IP’s licensed trademark attorneys use the same software to monitor domain registrations for our clients as well.

That way, if someone registers a domain that is too close to a trademark owned by one of our clients, we can take action before a problem occurs. One of the biggest problems we see is a cybersquatter using a similar domain to create email addresses. These emails can then be used to scam employees or customers of a particular company. Staying on top of domain registrations typically keeps you one step ahead of domain name infringement.

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Eric Perrott, Esq.

Eric Perrott, Esq. is a trademark and copyright attorney committed to providing high-quality legal services for any sized budget. Eric’s ability to counsel clients through any stage of trademark and copyright development and protection allows him to provide his clients with personalized advice and unique analysis. Eric can be reached directly at: eric@gerbenlawfirm.com. The contents of this blog are for informational purposes only and may not be relied on as legal advice.

Sophie Edbrooke, Esq.

Sophie Edbrooke, Esq. is an associate attorney at Gerben IP. She works closely with clients to provide individualized counseling on trademark and copyright matters, across a wide variety of industries. Before joining Gerben IP as an associate, Sophie worked for the firm as a law clerk and summer intern.