Domain name ownership disputes arising between owners of domain names and trademarks are common, and the skilled domain name attorneys at the law firm of Thomas P. Howard, LLC in Colorado have successfully handled numerous internet domain name disputes in connection with competing trademark rights.
Domain name disputes are handled pursuant to the Uniform Domain Name Dispute Resolution Policy (UDRP) of the Internet Corporation for Assigned Names and Numbers (ICANN), with which the trademark attorneys at Thomas P. Howard, LLC are extremely familiar. UDRP actions are a commonly used method for resolving disputes over Internet domain names, and they can be a fast and cost-effective alternative to litigation in federal court. The lawyers at Thomas P. Howard, LLC have wide-ranging experience in UDRP proceedings.
For trademark owners, Thomas P. Howard, LLC, can help you defeat cybersquatters and other unscrupulous domain name registrants who are infringing your mark and damaging your business name by incorporating the mark in a separately used domain name. We can initiate an administrative proceeding under the Uniform Domain-Name Dispute-Resolution Policy which, if successful, will force the cybersquatter to relinquish the offending domain name to you. Thomas P. Howard, LLC has secured favorable outcomes for many of its trademark clients. Similarly, for domain name owners, the firm's trademark lawyers can help defend the use of your Internet domain name against a trademark bully. These attorneys have prevailed against trademark owners who attempt to stretch and overextend their trademark rights against a legitimate domain name registrant in a UDRP action.
The trademark attorneys at Thomas P. Howard, LLC, have deep experience with trademark matters and are well-versed in the legalities of domain name disputes. It is important to have experienced attorneys on your side to effectively analyze all of the facts and evaluate the potential defenses available to you whether in a UDRP proceeding or federal cybersquatting litigation.
UDRP Proceedings
The rules for conducting UDRP proceedings were established by ICANN. UDRP proceedings are conducted by third-party organizations such as the World Intellectual Property Organization (WIPO), or the Forum (formerly known as the National Arbitration Forum, or NAF). Thomas P. Howard, LLC has represented parties in numerous UDRP matters before both WIPO and the Forum. After a UDRP proceeding is initiated, an administrative panel consisting of one to three persons will analyze whether the registered domain name is identical or confusingly similar to the asserted trademark, whether the registrant has any legitimate rights or interests in that domain name, and whether the domain name was registered and used in bad faith.
To assess whether the domain name has been registered in bad faith, the appointed panel will use several factors as tests, including but not limited to, what the registrant is using the domain for, past acts by the registrant, whether the domain is being used to disrupt the business of a competitor, and whether the domain is being used to palm off of an established mark. In drafting a UDRP complaint, it is important to describe the manner in which the accused domain name is identical or confusingly similar to the asserted trademark, and whether the domain name user is acting in bad faith.
For the domain name owner, possible defenses include rebutting the argument that domain is identical or confusingly similar, challenging whether the complainant owns the trademark or otherwise has any enforceable trademark rights, and showing good faith use of the domain. Whether or not the registrant has any legitimate rights or interests in the disputed domain name may be shown by evidence that the registrant used the domain name in connection with a bona fide offering of goods or services, or otherwise engaged in a legitimate use of the domain name, before receiving any notice of the domain name dispute.
In assessing the critical question of bad faith, one relevant circumstance is whether the domain name was registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to another for more than the registrant's out-of-pocket costs directly related to the domain name. Another relevant inquiry is whether the domain name was registered primarily for the purpose of disrupting or tarnishing the business of a competitor.
Although UDRP actions can be a fast and cost-effective alternative to litigation, injunctive relief and damages against cybersquatters and other infringers of your trademark rights under the federal Anticybersquatting Consumer Protection Act can only be obtained by filing a lawsuit in federal court.
Anticybersquatting Consumer Protection Act
Otherwise known as the cybersquatting provision of the Lanham Act, 15 U.S.C. § 1125(d) gives trademark owners a federal cause of action against those who obtain domain names in bad faith that are identical or confusingly similar to a trademark or service mark. Under the ACPA, trademark owners can seek not only transfer of the disputed domain to themselves but also monetary damages. Furthermore, a trademark owner may elect to take statutory damages and the court has the discretion to award damages of not less than $1,000 and not more than $100,000 per domain name. Whether to pursue action under the UDRP or the ACPA may depend on different factors. For example, while monetary damages are available under the ACPA, the only available remedies under the UDRP are cancellation or transfer of the domain name. On the other hand, UDRP actions are administrative proceedings that typically are resolved much sooner than a court proceeding in federal litigation and at a much lower cost.
A losing party can challenge an adverse UDRP decision in a “Mutual Jurisdiction” which the UDRP defines as “a court jurisdiction at the location of either (a) the principal office of the Registrar … or (b) the domain-name holder's address as shown for the registration of the domain name.” Where the U.S. is the Mutual Jurisdiction, an adverse UDRP decision can be challenged in a U.S. district court under the ACPA. Also, “a federal court's interpretation of the ACPA supplants a WIPO panel's interpretation of the UDRP,” Sallen v. Corinthians Licenciamentos LTDA, 273 F.3d 14, 28 (1st Cir. 2001); Barcelona.com, Inc. v. Excelentisimo Ayuntamiento De Barcelona, 330 F.3d 617, 626 (4th Cir. 2003) (“because a UDRP decision is susceptible of being grounded on principles foreign or hostile to American law, the ACPA authorizes reversing a UDRP panel decision if such a result is called for by application of the Lanham Act”).
The lawyers at Thomas P. Howard, LLC are very experienced in both administrative proceedings and federal litigation and can help you decide the best course of action for your needs.
Contact Thomas P. Howard, LLC for a Free Consultation
With their focus on intellectual property law, including trademark law, the Colorado domain name attorneys at Thomas P. Howard, LLC, are well-positioned to represent your interests in any domain name dispute. They have successfully handled numerous internet domain name disputes and know how to use UDRP proceedings, as well as the federal courts, to meet your goals. For a free consult regarding any internet domain name or other intellectual property related dispute that you may be experiencing, simply e-mail us, or call us at (303) 665-9845.