By Steve Levy
Back in the mid to late 90s, when use of the internet was just gaining popularity, brand owners started becoming aware of domain names that included trademarks which were being registered by people who had no connection with the company and no license or other authorization to use the marks. Sometimes these domain names hosted websites that contained offending content such as counterfeit or competing products for sale, porn, gambling, scams, etc. Early enforcement efforts focused on taking these folks to court but this was often difficult and expensive if the domain name owner resided in another country or was hiding behind a fake name.
In 1999, the World Intellectual Property Organization (WIPO), a United Nations agency, was tasked with creating a framework to address domain name trademark abuse on a global level and it issued a report detailing its findings and recommendations. The WIPO report sets out its definition of an “abusive registration” and this ultimately resulted in what we now know as the Uniform Dispute Resolution Policy (“UDRP”) which provides an arbitration framework that is faster and less expensive than going to court and isn’t limited by geographic boundaries.
An issue that’s left unresolved by the WIPO report and the UDRP is whether a brand owner must prove that a disputed domain name targeted its trademark – the domain owner knew of and intended to abuse that specific mark – or whether a lower “negligence” standard is enough to succeed under the par. 4(a)(iii) bad faith registration and use clause of the UDRP. Under this latter standard, some UDRP panels have been prepared to infer that the domain owner knew, or it should have known, that its registration would be considered abusive of a complainant’s mark. See the WIPO Overview 3.0 at par. 3.2.2.
One situation where this could arise involves an owner who registers domain names in bulk or purchases a group of domain names from someone else. Even if inadvertent, ownership of a domain name that copies a well-known trademark can lead a UDRP panel to find that, even if the owner didn’t specifically know of and intend to target the mark, it should have known of the existence of the disputed domain name in its portfolio and taken steps to avoid any abuse.
But before things get to the UDRP stage, it may be possible to send a cease-and-desist letter or email to the domain name owner explaining your claim and asking that it voluntarily transfer the domain name to you. If they are reputable domain investor who truly didn’t know that one of their properties is confusingly similar to your well-known mark, hopefully they’ll agree to your request or, at a minimum, offer to transfer the domain for a reasonable price that covers their provable registration or acquisition costs. While some brand owners take a very aggressive “we don’t negotiate with terrorists” enforcement style, working with a domain owner in this way can be a very cost effective and pragmatic way to resolve a dispute since the price requested may be far less than that of the UDRP complaint.
Of course, if negotiation isn’t possible, the UDRP is an excellent fallback and the “knew or should have known” argument may be your best bet for gaining the transfer of a domain name that copies your well-known trademark.