Domain name conflict in 7 steps

The Uniform Domain Name Dispute Resolution Policy (UDRP) offers trademark owners the opportunity to challenge domain names used by domain name holders that infringe on their trademark rights.

This is an online administrative procedure that applies to various gTLDs (such as .com) and a number of ccTLDs (including .nl). Below are practical experiences and best practices for the effective use of the UDRP. Domain names are not just ordinary web addresses, but strategic business assets that can greatly influence brand identity and online visibility.

The number of disputes is increasing, particularly due to cybersquatting: the registration of domain names in bad faith in order to exploit well-known or lesser-known brands. To combat this, ICANN introduced the UDRP in 1999 as a fast, relatively inexpensive and standardised alternative to legal proceedings.

Working with the UDRP: it has three core components:

1. Scope: the UDRP applies to disputes over generic top-level domains (such as .com and .net) and a number of other ccTLDs.
2. Conditions for a complaint: as the complainant, you must demonstrate the following:
   • The domain name is identical to, or causes confusion with, your trademark;
   • The domain holder has no legitimate right or interest in the domain name;
   • The domain name was registered and used in bad faith.
3. Procedure:
   • Submission: the complaint is submitted to an accredited institution, such as WIPO or the National Arbitration Forum, the Czech Arbitration Court Arbitration Centre for Internet Disputes, the Asian Domain Name Dispute Resolution Centre (ADNDRC) or the Canadian International Internet Dispute Resolution Centre (CIIDRC).
   • Assessment: a panel (usually consisting of one or three members) examines the arguments and evidence submitted.
   • Outcome: a decision is usually made within approximately 60 days, which may result in the transfer, cancellation or retention of the domain name.

Advantages of the UDRP

• Cost-effective: generally cheaper than litigation in court.
• Fast: disputes are usually settled within a few months.
• International: the procedure is in line with the cross-border nature of domain names and can be used in different jurisdictions.

No registered trademark – what then? The trade name?

Even without a registered trademark, UDRP proceedings can sometimes be successful, for example in the case of unregistered trademarks or customary rights; think of provable trade name use in certain countries (proof of sales to customers and therefore invoices, etc.). The complainant must then provide convincing evidence of these rights.

• Descriptive trademarks: in the case of descriptive terms, it must be demonstrated that the name has acquired a second, distinctive meaning over time. Panels are reluctant to grant exclusive rights to (highly) descriptive or general designations. Minor differences in domain names are often permitted, taking into account, among other things, the degree of similarity and the actual use of the domain name.
• First and last names: a well-known name alone is not enough. The name must have been used in trade in such a way that the public associates it with the origin of certain goods or services (see, among others, WIPO Case No. D2022-4015).

Approach for complainants and respondents

Anyone initiating UDRP proceedings must therefore be able to substantiate that:

• He owns a trademark that is identical or confusingly similar to the domain name (in some cases, this is your trade name – protected by Article 8 of the Paris Convention – Stockholm text and via Article 2.1. TRIPs);

• The other party has no right or legitimate interest in the domain name;
• The domain name has been registered and is being used in bad faith.

Questions?

Would you like to know more about protecting and enforcing your trademark or trade name rights on the web? Feel free to contact our specialised solicitors.