As brand owners know well, the Internet is the "wild west" of trademark infringement. For every new Internet-based technology developed, infringers find a way to exploit it. This is especially true for domain names, which virtually anyone can register, with virtually limitless infringing permutations. Thankfully, brand owners have the UDRP (Uniform Domain Name Dispute Resolution Policy), and they use it to cost-effectively claw back infringing domain names from cyber squatters.
Since its inception, the URDP has been invoked countless times, creating a shifting landscape of (nonbinding) case law that can be hard to interpret. To help claimants and respondents alike, the World Intellectual Property Organization (WIPO) publishes a detailed jurisprudential overview, which has evolved twice since first publication—six years ago in 2011, and recently in the spring of 2017.
Between Overview 3.0 (spring 2017) and Overview 2.0 (2011), many things have changed. Over a thousand new generic top-level domains (gTLDs) have been created. A new domain name dispute policy (the Uniform Rapid Suspension System, or URS) has been developed. New topics must be addressed, and so must changes to existing UDRP case law.
Below, by topic or UDRP element, is a list of changes apparent in Overview 3.0:
1.0 – Confusing Similarity
Overview 3.0 adds Section 1.1, which expressly provides that the term "trademark or service mark" in UDRP ¶ 4(a)(1) encompasses registered and unregistered marks. In both situations, rights must exist at the time the complainant files the UDRP complaint.
Also new, Overview 3.0 adds Section 1.12, which states that if a complainant's mark is recognizable within a disputed domain name, the addition of a third-party mark alone is insufficient to avoid a finding of confusing similarity.
Also new, Section 1.14 clarifies that a domain name that includes a translation or transliteration of a complainant's mark will normally be held to be confusingly similar to the mark.
2.0 – Respondent's Rights or Legitimate Interests
Section 2.2 lists nonexhaustive examples of prior use of, or demonstrable preparations to use, a domain name in connection with a bona fide offering of goods or services. Examples include:
- Evidence of business formation-related due diligence, legal advice, or correspondence
- Evidence of credible investment in website development or promotional materials (such as advertising, letterhead, or business cards)
- Proof of a genuine business plan utilizing the domain name, or credible signs of an attempt to create a business plan
Additionally, Overview 3.0 notes that UDRP panels have not required evidence of use/intended use to be available immediately after registration of the domain name.
Section 2.3, newly added, states that it is not necessary for a respondent to have acquired corresponding trademark or service mark rights in order to demonstrate that it is "commonly known" by its domain name. Respondent states a prima facie case that it is commonly known by its domain name if it shows credible evidence, such as a birth certificate, driver's license, or other government-issued ID, or independent and sustained examples of secondary materials referring to the respondent by the domain name.
Sections 2.4 and 2.5 (and subsections) explore "fair use" in the context of Respondent's rights or legitimate interests in a domain name.
- Section 2.5.1 states, specifically, that identical domain names carry a high risk of implied affiliation; and even if a domain name consists of a trademark plus an additional term, WIPO panels have held that it does not qualify as fair use, because it effectively suggests sponsorship or endorsement by the trademark owner.
- Section 2.5.2 describes facts and circumstances that panels consider in evaluating fair use, such as:
- Whether the domain name was registered and is used for legitimate purposes, and not as a pretext for commercial gain or otherwise for the respondent's benefit
- Whether respondent reasonably believes its use is truthful and well founded
- Whether commercial context makes clear that the respondent's website is not operated by the complainant
- Section 2.5.3 adds that panels have considered the following in evaluating fair use:
- Whether the respondent filed a response
- Whether the respondent used false contact information in registering the domain name
- Whether the respondent has engaged in a pattern of abusive domain name registrations
- Section 2.11 adds that panels assess claimed respondent rights or legitimate interests in the present, meaning panels look at the circumstances at the time of the filing of the complaint.
Authors' note: This makes it even more important, before sending any type of demand or filing a complaint, to document the alleged cyber squatting through evidence.
- Section 2.13 adds that panels have held that use of domain names to support illegal activity can never support the rights or legitimate interests of a respondent. Panels have accepted circumstantial evidence to support a credible claim of illegal activity, and have held that claims cannot be merely conclusory or wholly unsupported.
Authors' note: The UDRP has been used to shut down websites selling counterfeit goods bearing the complainant's mark, where the mark also appears recognizable in the domain name. Counterfeiting is not a legitimate interest in registering or using a domain name, and counterfeiting is also a crime in jurisdictions worldwide.
- Section 2.14 adds that, if a TLD describes goods or services, a geographic region, or another term associated with a complainant, then the respondent's use of that TLD supports a finding that the respondent obtained the domain name to exploit the complainant's mark, meaning respondent also lacks rights or any legitimate interests.
- Section 2.15 adds the note that panels often assess the second and third UDRP elements (lack of rights or legitimate interest, and bad faith) together.
3.0 – Respondent's Bad Faith
Section 3.1 adds a nonexclusive list of scenarios that constitute evidence of bad faith:
- Registering or acquiring a domain name for the purpose of selling, renting, or otherwise transferring it to the complainant
- Registering a domain name to prevent the brand owner from registering it, if the respondent repeatedly does this
- Registering the domain name to disrupt a competitor's business
- Using the domain name specifically to create confusion
This section also provides a general evidentiary framework for bad faith and applies these examples to bad-faith scenarios.
Likewise, Section 3.2 lists factors to consider in evaluating bad faith:
- The nature of the domain name
- The fact that the respondent chose the same TLD
- Website content
- Timing and circumstances of registration
- Clear absence of rights or legitimate interests, coupled with no credible explanation for respondent's choice of domain name
These changes demonstrate that UDRP case law continues to evolve over time, and that complainants and respondents continue to raise novel legal issues against even an apparently established policy. The UDRP will continue to be a great tool for brand owners seeking to claw back domain names from cyber squatters. If you have any questions about Overview 3.0 or the UDRP in general, please contact Venable.
*Deborah Bessner, a Summer Associate at Venable, assisted with the preparation of this article.