The Internet can be a dark and scary place for brands. When a potential threat materializes, it’s tempting to jump on the offensive (and to conclusions). But a strong offense isn’t always the best defense. Not every situation requires a UDRP complaint. Many cases of infringement can be settled in an alternative and cost-effective way.
How to file a UDRP complaint
The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is the Internet Corporation for Assigned Names and Numbers (ICANN)’s process for regulating domain name disputes. UDRP states that a party can file a complaint if a domain name is identical or confusingly similar to their trademark.
In a UDRP proceeding, the panel must find that the domain owner does not have legitimate rights or interest in the domain name or that they registered or are using it in “bad faith”. This process was established to protect brands and combat the use of trade marks as domain names without the trademark owner’s consent.
3 steps to follow before you file a UDRP case
Conduct research prior to taking action with a UDRP complaint. The first step is to determine if the domain in question is a threat or a non-competitor with rights. A domain similar to your own could be benign. Here are some considerations and observations to keep in mind when researching:
1. Is the domain confusingly similar?
2. What’s the purpose of the website? Is it in the same industry or business?
3. Is there content on the site? If so, does it have any relation to your brand?
4. Is it a business or an individual? Is contact information available?
2. Send an email to avoid UDRP costs
You’ll never get what you want if you don’t ask for it.
You miss 100% of the shots you don’t take.
You’ve heard the sayings. It may surprise you, but sometimes all you have to do is ask and you shall receive. You wouldn’t normally jump to a UDRP unless there is a clear case of infringement. Even in this case you may be advised to approach the situation with a Cease & Desist letter first. We’ve even had a case where we acquired a domain name for one of our Domain Concierge clients for free!
It is important to determine the best approach to go after a potentially infringing domain name before you proceed. Citadel Enterprise Americas LLC learned the hard way when they filed a UDRP against the domain name citadel-investment.com. If they had done their research, they would have discovered that the company who registered the domain name had rights to that name by the Ministry of Commerce and Industry in Oman.
Since it was found that it was not registered in bad faith, Citadel Enterprise Americas lost the UDRP. The kicker, as Andrew Alleman pointed out is that after all of that, the domain owner offered to transfer the domain to them for its out-of-pocket costs.
In this case, sending an email to the domain owner before filing a UDRP complaint could have made for an easy path to resolution. Talk about a facepalm moment.
3. Work with UDRP providers who can advise you
Make sure you partner with a trusted and experienced corporate brand services provider when considering UDRP resolution. If we had to guess, we would say you probably want to work with someone who will advise you not to proceed when it’s clear that you will lose. Right?
Sun Valley’s recent cybersquatting dispute baffled many people. Sun Valley ski resort filed a UDRP against the domain name SumValley.com. This was understandable since it is a suspiciously similar domain name. What happens next is that the domain owner responds with all of the facts that check out:
- The owners are a husband and wife who registered the domain for their accounting business
- They wanted to play off the well-known term “sum” in mathematics and “Silicon Valley”
- They registered the business with the Texas Secretary of State, got a federal tax ID from the IRS, opened a bank account and started invoicing customers according to this source.
Image Source: sunvalley.com
With all of the facts now present, any advisable UDRP provider would recommend you to withdraw your complaint. However, Sun Valley and the team did not. They even went as far as to question the couple’s motives for not having already built a website on the domain name. At this point, Sun Valley should beware of crossing into the territory of reverse domain hijacking (RDNH). RDNH means using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.
Many people question why Sun Valley’s lawyer did not advise them to pull the case. We can’t emphasize enough how essential it is to work with a partner you can trust.
101domain is your brand protection partner
Although many cases of infringement can be settled in an alternative ways, UDRP is an excellent resource for brand owners. We have been working with corporate clients since 1999 to secure their digital assets. With a combination of monitoring and enforcement services, 101domain will advise you on how protect your domain portfolio and take action when necessary.