How to act if someone else registers a domain with your trademark?

Question

How to act if someone else registers a domain name with your trademark name?

Answer

Most registries do not scan domain names against known trademarks. In other words: everybody can register a domain name, even microsoft.com or google.nl if it wasn't already taken. If this happens to your or your customer's trademark and damage is done, there are three methods to deal with this: the domain dispute policies URS and UDRP, and a formal complaint to a court.

URS and UDRP

The Uniform Rapid Suspension (URS) and Uniform Domain Name Dispute Resolution Policy (UDRP) have a lot of overlap, but also differences. URS is the smaller and faster variant of UDRP, introduced with the launch of the new gTLDs in 2013.

Both types define three prerequisites that must all be met to make a complaint valid:

  • the registered domain is identical or confusingly similar to the trademark
  • the registrant has no legitimate right or interest to the domain name
  • the domain name was registered and is used in bad faith (includes 'just for selling to trademark holder', domain hijacking, ...)

If not all three prerequisites are met, URS and UDRP are no option.

The common parts of URS and UDRP are, that a complaint is filed and an arbitration committee reviews the complaint. This leads to an outcome. However, while UDRP can force a domain to be transferred to the complainant, URS can only lead to suspension of the domain name.

This table lists the most important differences between URS and UDRP:

  URS UDRP
Supported extensions
  • New gTLDs
  • Some legacy gTLDs
  • A few ccTLDs
Eligibility Registered trademarks only Also common-law trademarks
Price (depends on provider) Cheaper More expensive
Resolution Suspension of domain only Transfer or cancellation of domain
Speed Faster (few weeks) Slower (few months)
Deliverables Full proof of lack of legitimate interest and bad faith Report likeliness of lack of legitimate interest and bad faith

 

Regular court

If URS and UDRP cannot be used, for example because the domain owner is not using the domain in bad faith, the trademark holder may refer to his or her local court. Whether or not this will be successful depends on too many variables to describe here: the coverage of the trademark, the jurisdiction of the domain owner, the contents of the website... We advise to contact a legal advisor.


Trademark Protection Services

Exactly for this kind of situations, a couple of providers offer trademark protection services like DPML and TREx. That prevents the trademark holder from defensively registering a lot of domain names, and protects against non-trademark holders registering the domains. More information is available in our knowledge base.

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