Protect Your Website--Gain Control of Copycat Sites Inexpensively without Going to Court STAFF PICK

Galen Gentry

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Divorce / Separation Lawyer

Contributor Level 13

Posted about 5 years ago. 13 helpful votes

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1

Confirm your problem is covered by the ICANN dispute resolution policy

As internet marketing becomes more popular, businesses face increasing threats on the web. Common problems include domain names that are misspellings of the company's domain or similar enough that users looking for your company's site end up on a competitor's site by mistake. Some cyber-pirates design websites to confuse users and cause them to believe the infringer is associated with the company in an attempt to siphon off potential customers. Another problem is discovering a site with a similar domain name that is designed to disparage your business. The quasi-private authority which controls ownership of all domain names is called the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN provides a simple procedure for resolving disputes related to abusive behavior. To initiate the arbitration proceeding one files a Uniform Domain Name Dispute Resolution Policy Complaint, UDRP for short.

2

Determine what facts you need to assert in your UDRP complaint

The complainant must assert that the party controlling the abusive website (called the respondent in the complaint) has: (a) a domain name that is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (b) that the respondent has no rights or legitimate interests in respect of the domain name; and (c) the respondent's domain name has been registered and is being used in bad faith.

3

Ensure you have evidence to show the copycat acted in bad faith

a) evidence that the respondent has registered or has 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 to a competitor of the complainant; or (b) the respondent has registered the domain name in order to prevent the owner of the trademark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or (c) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or (d) by using the domain name, the respondent has intentionally attempted to attract Internet users to its web site by creating a liklihood of confusion with the complainant's mark as to the source, affiliation or endorsement of goods or services.

4

Familiarize yourself with how the UDRP complaint works

The NAF (National Arbitration Forum) and the WIPO (World Intellectual Property Organization) both provide UDRP arbitration services. They have slightly different procedural rules and fees. Generally, the respondent has thirty days to answer the complaint after it is filed. Often the respondent will not answer, in which case the complainant usually wins by default. If the respondent does answer, the complainant has five days to submit any additional relevant materials. The arbitrator will provide a written decision after final submissions. Both NAF and WIPO are designed to be fast and inexpensive compared to a lawsuit in a court. The parties can decide whether they want to use one arbitrator or three. A single arbitrator is usually fine. The costs are similar,$1300 for a single NAF arbitrator and $1500 for WIFO. The costs increase if more than one domain name is at issue. It also costs more if you elect to use a three person panel.

5

UDRP complaints are fast and inexpensive, but they are not right for every situation

You can prepare the complaint yourself, but its better to have an attorney familiar with domain name disputes and trademark law advise you and draft the document. Attorney's fees vary, but the cost should be modest. The ICANN dispute resolution policy is not intended for contract disputes, domains that are not entitled to commercial protection, defamation claims, or typical trademark infringement cases. If domain infringement is part of a larger trademark infringement problem, it may make sense to file a lawsuit in federal court which has the authority to award damages, costs and attorney's fees to the prevailing party. But a UDRP complaint can resolve a domain name dispute at a fraction of the cost of a lawsuit in court. If some one has put up a site that is designed to disparage yours or to siphon off customers, then filing a UDRP complaint may be the way to go.

Additional Resources

You can find all the rules and description of the fees and procedures of NAF and WIFO on their sites.

World Intellectual Property Organization

National Arbitration Forum

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