Owning a registered domain name can come with some issues including trademarked or copyrighted information and cybersquatting. These issues are resolved by the Uniform Domain Name Dispute Resolution Policy (UDRP), which is overseen by ICANN.

When you decide to set up shop on the Internet, you need to choose a domain name. There are quite a few to choose from, and it is important that you pick something that is unique, and that does not infringe on someone else’s claims. Often these other claims include trademarked or copyrighted material. Additionally, these issues include cybersquatting. The claims are resolved according the Uniform Domain Name Dispute Resolution Policy (UDRP), which is set forth by ICANN, the Internet Corporation for Names and Numbers. The governing body of Internet naming policy has some guidelines for UDRP.

Having a domain name revoked

First of all, in order to have a domain name revoked, it is necessary that the trademark owner take action against the person using the domain name. In order for the UDRP to be in force, some sort of legal action, either to a court, or to a dispute resolution service provider, must happen. ICANN has a specific list of dispute resolution service providers that can be used. The complaint has to go through before the registrar can revoke the domain name registration. Cybersquatting is usually resolved by an expedited process.

In order to succeed with a UDRP complaint, the following three conditions must be met:

1. Domain name is either the same as, or very similar (confusingly so) to a trademark that is already someone else’s right.
2. The registrant of the domain name does not have any true interest or legitimate rights to the domain name.
3. “Bad faith” is being used by the registrant in the registration of the domain name.

Someone challenging another’s right to use a domain name needs to prove these things. Often, when someone is using a trademarked domain name, they are doing so in order to capitalize off the work someone else had done in terms of branding and developing something with a good reputation.

Since it can be confusing to define “bad faith”, there are more factors that a panel that considered a UDRP complaint will consider. Some of things that go into the decision include:

• Whether or not the registrant planned to sell, rent or somehow transfer the domain name to the person who owns the trademark. Indeed, some registrants do this in order to sell the domain name to the person or organization that owns the trademark. This is considered an abusive practice (and is illegal under United States law), and is known as cybersquatting.
• Whether the registrant purposely set out to prevent the trademark owner from being able to register his or her own mark as a domain name.
• Whether the registrant wanted to disrupt the online reputation or success of a trademark owner by drawing more traffic to the registrant’s domain.
• Whether the registrant is trying to capitalize off of someone else’s brand, seeking commercial gain by purposely trying to confuse potential customers.

Some of the more famous disputes over domain names include those related to Madonna, in which she has won the right to Madonna.com, in which someone tried to cybersquat the name of the famous singer, wishing to also make money off of her well-known success. Right now, and action is under way as Robert De Niro tries to assert his rights to tribeca.net, a film festival Web site that makes use of his trademarked film festival name.

In the end, the UDRP is not the final answer. If someone loses an UDRP complaint, it is still possible for him or her to sue the registrant. The Anticybersquatting Consumer Protection Act provides a place for concerned trademark holders in the U.S. This means that the UDRP decision is not necessarily binding. If a domain name registrant loses the dispute, he or she must file a lawsuit within 10 days. If this does not happen, ICANN will require that the domain name registrar transfer the domain name.

When you sign up for a domain name, you agree to terms and conditions that allow for the arbitration of disputes over your domain name by ICANN’s UDRP. If you do not like the dispute process, that means that it is best if you avoid agreeing to the terms – in which case you may not be able to register the domain name.

Related Article: ICANN and Domain Registrars >>