Since domain names were made available on the Internet (as opposed to IP addresses), people and businesses have been scrambling to register names to use in the future, to prevent others from using them in the future, and to sell to businesses who have legitimate interests in the names, i.e., to trademark holders who weren't quick enough. When a person or company purchases a domain name specifically to squat on it (hold it to sell to the "legitimate" trademark holder or to make money based on the similarities to an existing trademark holder), it is relatively simple to force the squatter to turn the name over. Your options are (1) file a trademark infringement lawsuit or (2) submit to arbitration.
Lawsuits can be very time consuming and expensive, but if you win, you get all of your costs covered and can win damages.
Arbitration proceedings are fast and relatively inexpensive but award no attorneys fees or damages. A typical arbitration filing costs $1750-$2000 depending on how much your attorney charges you. The costs are made up of the arbitration panels' fees, which vary depending on the number of disputed domains and the selection of a single-member or three-member panel, and the attorneys' fees. Panel fees start at $1,300.00 for 1-2 domains and a single-member panel and go up.
NOTE: Filing a UDRP complaint does not prevent you from filing a trademark lawsuit at a later time.
When a person or company registers a domain name, they agree to a Registration Agreement which stipulates that disputes over ownership of domain names will be governed by the Uniform Domain Name Dispute Resolution Policy (UDRP). ICANN, the Internet Corporation for Assigned Names and Numbers is the organization that coordinates, manages, and oversees the Internet's domain name system, and UDRP was approved by ICANN on October 24, 1999.
When you register a domain name, you agree to the following:
From ICANN - Uniform Domain Name Dispute Resolution Policy
2. Your Representations. By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.
4. a. Applicable Disputes. You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
If a person registers a domain name in order to take advantage of the goodwill you have created by building your brand, then there is a very good chance that you can recover the domain name through arbitration. Examples include domain typo registrations, all trademark violations, and domain snatchers (people who backorder established company domain names in an attempt to extort the legitimate owners by selling the domains back or in an attempt to "steal" and resell website traffic).
We successfully used arbitration to recover the domain name SEOLOGICS.COM, which we now point to our SEO Logic (SEOLOGIC) Copyright and Trademark Information page. The total cost was $1,300 in fees paid to the National Arbitration Forum plus our attorneys' fees, which they have politely asked us not to disclose.
The process is quite simple, though it can seem daunting to anyone without a legal background. You really do need a lawyer.
To file a complaint and recover a domain that is being used illegally:
1. Hire an intellectual property attorney.
2. Have your attorney, file a UDRP Complaint with a recognized arbitration forum. In filling out the forms, you have to assert that the domain name that was abusively registered is identical or confusingly similar ot a trademark or service mark in which you have rights; that the abusive registerer has no rights or legitimate interests in the domain name; and that the domain name was registered and is being used in bad faith.
Filling out the forms can seem complicated, but there are clear instructions posted at the arbitration forum websites.
National Arbitration Forum: File a UDRP Complaint.
World Intellectual Property Organization (WIPO): Case Filing Guidelines.
(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
From Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") (As Approved by ICANN on October 24, 1999)
For more on Cybersquatting and Trademark Infringement, read the following:
File a UDRP Complaint - National Arbitration Forum
Caslon Analytics: ICANN and the UDRP
Cybersquatting and Trademark Infringement
E LAW | Murdoch University Electronic Journal of Law
Cybersquatting: What It Is and What Can Be Done About It
Nolo.com
WIPO (World Intellectual Property Organization) Domain Name Dispute Resolution Service
WIPO Domain Name Dispute Resolution Statistics
National Arbitration Forum: About Domain Name Disputes
NAF 2005 Domain Dispute Press Releases
NAF 2006 Domain Dispute Press Releases
NAF 2007 Domain Dispute Press Releases
