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Domain Name Disputes

int-banner2Domain Name Disputes

Roka IP Solutions can help protect your trademarks against cybersquatters, or defend your domain name registrations, by negotiating with opposing parties and, if that proves unsuccessful, by representing you in the resolution of domain name disputes in federal court under the provisions of the Anti-Cybersquatting Consumer Protection Act, or via the international arbitration system created by the Internet Corporation of Assigned Names and Numbers (“ICANN”).  ICANN implements the international policy for the resolution of domain name disputes known as the Uniform Domain Name Dispute Resolution Policy.

Anti-Cybersquatting Consumer Protection Act (“ACPA”).  The ACPA provides standing for a trademark owner to sue an alleged “cybersquatter” in federal court and seek a court order requiring a domain name registered to a cybersquatter to be cancelled or transferred to the trademark owner.  In some cases, a court may require a cybersquatter also to pay monetary damages to the trademark owner.  To prevail as a plaintiff in a cybersquatting case, the trademark owner must convince the court that the domain name registrant had a bad-faith intent to profit from the trademark, and that the alleged cybersquatter “registers, traffics in, or uses” a domain name that is either identical or confusingly similar to a distinctive mark that was distinctive at the time of registration of the domain name, or that is identical, confusingly similar to, or dilutive of a famous mark that was famous at the time of registration of the domain name.

Uniform Domain Name Dispute Resolution Policy (“UDRP”) Proceedings.  A UDRP proceeding is an administrative proceeding by which (1) a complaint is filed with an ICANN-accredited dispute resolution service provider, such as the World Intellectual Property Organization (WIPO) Center; (2) a response is filed by the opposing party; (3) the dispute resolution service provider appoints an Administrative Panel of one or three persons to decide the dispute; (4) the Administrative Panel issues its decision and notifies the relevant parties; and (5) if the Administrative Panel decides that the domain name should be cancelled or transferred, then the domain name registrar is directed to implement the decision of the Administrative Panel.

Initiating a UDRP proceeding is often preferred over an ACPA lawsuit, particularly if it is not critical for a trademark owner to seek injunctive relief or damages. UDRP proceedings may be used by a person who alleges that a domain name is identical or confusingly similar to a trademark or service mark in which the person possesses rights; that the domain name owner has no legitimate interests in the domain name; and that the domain name was registered and is being used in bad faith.   While the UDRP does not provide monetary remedies, the domain name can be ordered to be cancelled or transferred to the trademark owner if the complainant prevails.

Depending on your needs and the particular situation, UDRP procedures may be more cost-effective and may result in a much more hasty resolution than filing a lawsuit in federal court under the ACPA.  However, a domain name registrant who loses in a UDRP proceeding can challenge the Administrative Panel’s and halt or delay the cancellation or transfer of the domain name by filing a court challenge of the Administrative Panel’s decision, if so inclined.  Whether or not a losing party will decide to challenge a decision under UDRP in court may depend on such factors as perceived strength of case; resources available to litigate; size of investment in use of the domain name; and perceived potential exposure in court.  Roka IP Solutions can help you to determine the best mechanism for disputing a domain name registration.

Roka IP Solutions can also assist you to resolve domain name disputes under the Uniform Rapid Suspension System (URS), applicable to the new generic top level domains (gTLDs), or under certain country code top level domain (ccTLD) dispute resolution policies adopted by ccTLD registry operators that have adopted dispute resolution policies other than the UDRP.

For assistance with your domain name dispute, call or contact Roka IP Solutions online to schedule a consultation.

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