Domain Name Dispute Resolution

about img

Your domain name is the portal to your website, which is the face of your business to the world. It means the difference between a potential customer finding your business on-line or finding your competitor’s business instead. It is therefore arguably your most important intellectual property asset. But securing it is often a frustrating endeavor. Another business may already own it. Or you may own it and another business may claim that it has the right to it.

As a portal to a business, a domain name is a trademark. And like any trademark, its ownership rights are governed by trademark law. Specifically, the Anti- cybersquatting Consumer Protection Act (ACPA) governs who has the right to own a domain name.

There are two options to resolve a dispute over the ownership of a domain name under the ACPA. A party may file either a trademark action in federal court or a complaint with one of several private arbitral bodies which will arbitrate the claim pursuant to the Uniform Domain Name Dispute Resolution Policy (UDRP), which was created by the Internet Corporation for Assigned Names and Numbers (ICANN). To prevail on an ACPA claim in either of these forums, a party must prove, like on all trademark claims, that there is a likelihood of confusion between the domain name and a trademark the party owns, but it also must prove that the domain name owner has no legitimate interest in the name and that the owner registered the name in bad faith. If a party is successful in making all these showings, the UDRP arbitral body will either cancel the domain name or transfer it to that party.

The major advantage of filing a complaint with an arbitral forum under the UDRP is that it will be resolved far faster than a claim brought in federal court. But making out the showing required to prevail on or defeat an ACPA claim, and doing so in the very abbreviated time period provided under the UDRP rules, requires an attorney to have at his fingertips extensive knowledge of trademark law and the types of evidence necessary for such a showing. Zarin & Associates has such knowledge. Whether you own a domain name which someone else is attempting to seize from you or you wish to obtain a domain name to which you believe you are rightfully entitled, therefore, we can help you prevail in an arbitral proceeding under the UDRP.