In an era where the world is connected through the internet and domain names have sold for hundreds of millions of dollars, there rests a question that calls for the ol’ pros and cons table. When a large company, or a famous individual, builds the goodwill of their trademark, they, in most cases, will spend a significant amount of money in protecting that goodwill.
Sometimes, someone comes along and feels that they will go ahead and bank off the goodwill, which has already gained notoriety, and register a domain name that is very similar, or uses a significant portion of a trademark owner’s name, and offer similar services thereon. For example, Coca-Cola Company owns the domain www.coca-cola.com. In an attempt to trade off the goodwill of Coca-Cola, someone may register the domain name www.cocacolasodas.com, and offer a dark-colored, fizzy drink to the public.
In the Coca-Cola’s example, Coca-Cola would have a few options. I am not saying that there are only two options, but these are two ways that most domain name disputes can be resolved. One, you can file a lawsuit against the infringer (after weeks of trying to obtain the name and address of the Registrant because they probably use a whois privacy company, and then on top of that, use a P.O. Box), and attempt to obtain a judgment. Once the judgment is entered, you can forward a copy to the Registrar, who will then cancel the registration of the domain name.
Second, you can file a complaint with the ICANN using the Uniform Domain Name Dispute Resolution Policy. In this form of domain name resolution, it is much like filing a lawsuit and obtaining a judgment, only you are not filing in a Federal Court. In some cases, it would be more cost effective using the ICANN UDRP in obtaining a judgment, because like I mentioned, it is sometimes very difficult obtaining the information necessary to track down a Defendant.
The process consists of a Complaint filed against the domain name infringer. The infringe,r or Respondent, will then have to file a Response to the Complaint. Upon receiving the Response, the parties can file additional statements and documents within five (5) days after the Response was received. Once all the pertinent information is in, the parties will then decide whether they prefer three panelist, or one, to decide their matter. Electing to go with one panelist will warrant you a significant reimbursement of the approximately $3,000 (not including attorney’s fees) you pay to file the Complaint. The elements which need to be alleged in the Complaint are:
a. the manner in which the domain name is identical or confusingly similar to a trademark;
b. why the infringer/Respondent has no rights or legitimate interest in the domain name; and
c. how the infringer/Respondent is using the domain name in bad faith.
If the panel finds all the elements in a trademark holder’s favor, a judgment will be entered and will be forwarded to the Registrar of the domain name. Cheers.