Rome LLP

Written by Andrew Keyes, Associate at Rome LLP | IP Litigation, Trademark Prosecution & Enforcement, Commercial Litigation, Entertainment & Media Litigation, Entertainment & Business Transactions 

Cybercrimes such as domain name infringement and theft have surged since the pandemic. “Cybersquatting,” one of the most common forms of domain name infringement, is where domain names are registered in bad faith to closely resemble trademarked brand domains. According to the World Intellectual Property Organization (WIPO), a specialized agency of the United Nations protecting and promoting intellectual property rights across the world, domain name dispute filings surged for a third year in a row, with a 7% increase in new domain name complaints from 2022. 

If you own a company in the digital age, it is crucial to be proactive about protecting your trademark rights and taking quick action against cybersquatters. The bad news? High profile businesses or persons are more likely targets for domain name infringement. The more well known your brand is, the more likely someone will try setting up a copycat version of your domain. The good news? With the right legal team, you can fight back and win quickly through the UDRP process. 

Namecheap files a UDRP complaint and wins domain name dispute

Namecheap, Inc. has grown to become one of the largest domain name registrars in the world, with over 18 million domain names under management. On August 29, 2024 we successfully resolved our fourth domain name dispute this year on behalf of our client Namecheap, Inc., an ICANN accredited domain name registrar and web hosting company. 

Our domain name litigation team has successfully resolved multiple domain name matters for Namecheap, Inc. across the last few years resulting in the infringing domain names being transferred back to our client, the rightful trademark holder.

The evolving nature and frequency of cybersquatting means that high profile brands like our client’s are constant targets for look alike domain attacks. In this particular matter, Namecheap, Inc., v. Agit Kaya – the infringing party had deliberately registered and used the disputed domain name to falsely suggest an affiliation with or endorsement by Namecheap, Inc. Ultimately the WIPO arbitrator decided in favor of Namecheap Inc. and ordered the infringing party to transfer the domain name back to our client 

How did we win the domain name dispute on behalf of Namecheap? 

Our UDRP complaint successfully proved that the infringing party had registered and used the domain name in bad faith, and that they:

• lacked the rights or legitimate interests in the disputed domain name.
• tried to capitalize and take advantage of Namecheap by offering to sell the disputed domain name back to them only three days after registering it.
• threatened to sell the disputed domain name at auction.

What is the UDRP complaint process?

The UDRP complaint process was established by ICANN as an expedited trademark action. It is of particular interest to trademark holders who want a quick way to stop online infringement, specifically cybersquatting. This online enforcement tool can help trademark holders successfully fight back against domain name infringement and have infringing domains canceled or transferred back quickly.

How long does the UDRP complaint process take?

• The process starts by filing a UDRP complaint with WIPO or the National Arbitration Forum (NAF) to begin a formal domain name dispute.
• The respondent must file a response to the complaint within 28 days. 
• The arbitrator appoints a panel to review the matter within five days.
• After the UDRP panel is appointed, the panel will review the complaint and response and issue its decision within 14 days. 
• The whole process is fast and typically concludes within 60 days.

It is important to note that the UDRP complaint process is very narrowly tailored to stop only a limited range of trademark infringement, namely cybersquatting. Additionally, the arbitration panel is not bound by the trademark rules of any one jurisdiction, although it will take into account prior decisions from its own panels. They will also take into account trademark jurisprudence from different jurisdictions. At Rome LLP we typically cite American trademark jurisprudence in our legal briefs and combine that with prior WIPO panel case citings and relevant case law.

What are examples of domain name infringement?

• CyberSquatting: a bad actor registers a website domain that is confusingly similar to an established trademark typically with the intent to sell the domain back to the trademark holder for profit.
• Typosquatting: a bad actor registers domain names that are common “typos” or misspellings of domains owned by established trademarks, with the goal of deceiving users into giving sensitive personal or financial information that can be used to defraud them. 
• Domain Spoofing scams, also known as look-alike domain attacks: a website created by a bad actor is made to look exactly like a legitimate website (including copycat logos and blog articles) to intentionally deceive users into handing over sensitive information.

Do you need an attorney to file a UDRP complaint?

Technically no, any entity or person can file a UDRP complaint. However, while it is possible to go it alone, the chances of reaching a successful result are significantly lower given the legal nature of a domain name dispute. The UDRP complaint is a legal brief and requires legal analysis of trademark rights as they apply to domain names. 

Most infringement cases do require a lawyer’s understanding of trademark rights and legislation to produce the best chance of a successful outcome for the complainant. It may seem counterintuitive, but having the counsel of an IP and trademark attorney with extensive experience in domain name disputes and trademark infringement is often the most efficient way of recovering your domain names. Drafting a UDRP complaint for trademark infringement without citing the laws, statutes, and most convincing panel case studies relevant to your domain infringement may produce a negative outcome.  

How do you know if you have a strong case for a domain name dispute?

• The domain name in dispute is identical, or confusingly similar, to a trademark or service mark in which you have rights.
• You have proof that the domain name has been registered and used in bad faith.
• Your trademark and/or brand are famous and distinctive.
• The goal of the infringing domain holder is to direct consumers away from your site or to adversely affect your reputation.
• The infringing domain name holder has attempted to sell the domain name back to you or otherwise profit from it without selling legitimate goods or services. 

What do you need to do when you realize someone is using your domain name?

Getting a trademark attorney’s input is always a smart first step. A good attorney will not immediately rush to litigation. After considering your specific conditions and desired outcomes, they will counsel you regarding your rights and advise you on the best course of action. 

This might be:

• A relatively quick and cheap administrative action, such as an ERP or UDRP complaint.
• A review of your trademark’s validity to ensure you have a case. 
• All-out litigation. 
• A complaint at the Federal level.

Having an IP and trademark attorney to advise you of your rights, your standing, and the best course of action is key to resolving the situation efficiently and cost-effectively with the least damage to your brand. 

Why might your UDRP complaint be denied, and what to do if it is?

One of the reasons why your UDRP complaint might be denied is that trademark law allows for noncommercial and other fair use of any trademark such as criticism, parody, news reports, and comparative advertising. Trademark law also allows for fair use of a trademarked name if it is clear that the use is not attempting to deceive the public into believing there is any kind of affiliation, origin, partnership, or other commercial relationship with the trademark owner. 

In a recent case, the Porsche Motor Company attempted to take down an infringer, and was rejected. The respondent registered the domain names <porsche-buy.com> and <porschebuy.com> and was able to keep his domain names on the basis of 1) his disclosure on the website that clearly expresses no affiliation or authorization by Porsche the company; 2) the absence of any misuse of the distinctive characters, logo, or drawing of the Porsche trademark which further distinguished him from the trademark holder; 3) and the website domain names clear explanations that used cars are being sold by third parties and not by Porsche Motor Company. The WIPO panel rejected the complaint. 

In another denied WIPO decision the respondent prevailed due to the complainant’s inability to disprove fair use. It is important to note the limited scope of application of the UDRP complaint process. As the decision states, “UDRP proceedings are designed to deal with clear cases of cybersquatting and are not well suited for resolving “cases where a registered domain name is subject to a legitimate dispute (and may ultimately be found to violate the challenger’s trademark).” In other words, if an infringer has set up an infringing domain name, but they are actually transacting business at that domain name, the UDRP panel might not consider that to be a clear cut case of cybersquatting and may reject the claim. However, this may still be considered trademark infringement under federal law. 

Taking your domain name dispute to federal court

If your legitimate trademark infringement complaint is denied in the UDRP process, you still have the option to escalate to the federal level and have the matter reevaluated in a court of law. Unlike other types of arbitration, federal courts do not consider UDRP decisions as binding. Therefore if your UDRP claim is unsuccessful, you have a second option. There are many types of trademark infringement that are not addressed by the UDRP process. An experienced IP and trademark attorney will assess your situation comprehensively from the outset to determine the quickest resolution and the best outcome for your brand without wasting valuable time and resources.

Best practices to keep your domain names safe: 

• Trademark registration: Prior to filing a UDRP action you need to have secured your trademark rights. This means filing trademark registrations for your trademarks in your local jurisdiction. Rome LLP has a robust intellectual property practice and handling trademark registrations is certainly something we can certainly help a client with. 
• Continuous Monitoring of Online Copycat Domains: There are many companies on the web that will continuously monitor websites with similar names to your websites and to your trademarks. The goal is to catch infringers as close to real time as possible and set the appropriate legal recourse in action immediately to have them removed from the web with as little damage done to you and your brand as possible. 
• Use a reputable domain name registrar and hosting provider: Choose a domain name registrar that has robust security measures in place to protect against domain spoofing.
• Register alternative top-level domains (the url suffix – typically .com, .org, .net, etc): Cover as much ground as you can by registering alternative domain names and typo versions of your second level domain names (the data directly before “.com” – typically your brand name) to stop bad actors from utilizing them. 

Takeaways: How to protect your domain name, your brand, and your trademarks 

Domain name infringement and trademark violations are a significant threat to any brand’s reputation and business. In specific cases, the UDRP process is the fastest and most cost-efficient way of recovering stolen or infringing domains. If you believe your domain name has been replicated or imitated in bad faith and you are unsure how to reclaim it or protect your entity from future trademark infringements call or email us for a free consultation. Taking proactive measures and consulting with a trademark attorney with insights into the various domain name dispute processes will help position you for the best legal outcome.