Domain Name Disputes
Conflicts are everywhere and it does take many forms and shapes. In life though, we have learnt how to handle conflict. The same can be said about the domain name system. Conflicts do arise and thus there is a dispute over domain names.
A domain name dispute is a conflict that arises when more than one individual or group believes it has the right to register a specific domain name. Most commonly a domain name dispute would occur when a domain name similar to a registered trademark is registered by an individual or organization who is not the trademark owner.
When a registrant chooses a domain name, the registrant must warrant that registering the name will not infringe or violate the rights of any third party. The registrant must agree to participate in an arbitration like proceeding should any third party claim an infringement of their rights.
The domain name system translates domain names into IP addresses so browsers can load Internet resources. Common domain name violations include:
- Cyber-squatting. Cyber squatters disregard the existence of a trademark to profit from others. They buy domains to create sites that look like they are from reputable companies. Cyber squatters acquire these domain names so they can sell them at a profit.
- Reverse-cybersquatting. This is when a trademark owner attempts to acquire a domain name from an owner who registered the domain name legitimately.
- Typo squatting. This is the purchase of a misspelled version of a popular domain name in an attempt to divert traffic to sites that benefit the registrant.
There are ways to protect companies and individuals against persons who, in bad faith, register a domain name that is the same or confusingly similar to an existing trademark. The following factors are elements that a court can consider to determine whether the domain name was registered in bad faith.
- Does the domain name holder have trademark rights in the domain name?
- Is the domain name the legal name of the domain name holder, or some other name that is otherwise commonly used to identify that person?
- Has the domain name holder made use (prior to the dispute) of the domain name in connection with a bona fide sale of goods or services?
- Is the domain name holder using the mark in a bona fide non-commercial or fair use way at a web site accessible at the domain name?
- Is the domain name holder attempting to divert consumers from the trademark owner’s web site in a confusing way, either for commercial gain or in an attempt to tarnish or disparage the trademark mark?
- Has the domain name holder offered to sell the domain name to the trademark owner (or anyone else) for financial gain without having any intent to use the mark with the sale of goods or services?
- Has the domain name holder behaved in a pattern of registering and selling domain names without intending to use them in connection with the sale of goods or services?
- Did the domain name holder provide false information when applying for the registration of the domain name (or do so in connection with other domain names)?
- Has the domain name holder registered domain names of other parties trademarks?; and
- How distinctive and famous is the trademark owner’s trademark?
To formally enforce your rights, you could:
- Invoke a domain name resolution process.
- Depending on the cybersquatter’s actions, bring a claim for a trademark infringement, passing off and/or defamation.
Individuals who are victims of any of the above mentioned violations are able to file a complaint as long as they provide evidence to the legitimacy of ownership of a domain name or trademark.