Advertising Law Tool Kit - Ninth Edition | 2021

Venable / 29 28 / Venable Domain Names, Cybersquatting, and UDRP Your domain name is your brand’s own piece of online real estate, the place where consumers go to find information straight from the source. It also acts as an online signature, reminding users that you are the authentic source of whatever they are reading or buying. So when an anonymous bad actor – like a cybersquatter – registers a domain name that steps too close to your trademark, you often need to act as quickly as possible to regain control of your brand. There are a multitude of ways to react, including demand letters, purchasing the domain name, litigation, and administrative proceedings like UDRP or URS. One such administrative proceeding frequently used for the standard generic top-level domains (gTLDs) is a Uniform Domain-Name Dispute-Resolution Policy (UDRP) proceeding. UDRP is a binding arbitration program built into the registration policy of every domain name. For a relatively low filing fee, rights holders can institute a UDRP proceeding to challenge an infringing domain name registered anywhere in the world. Decisions are rendered on the pleadings and often delivered within weeks of filing. A successful challenge transfers control of the offending domain name to the petitioner to use or delete as it sees fit. Consider these factors when evaluating whether to bring a UDRP action: • Do you know the cybersquatter’s identity? Online infringers often hide behind privacy protection services to obfuscate legal action against them and make service of process difficult. Under the UDRP, service is self‑executing, and many privacy protection services automatically unmask hidden registrants upon the filing of a UDRP complaint. • Was the infringement planned from the start? The UDRP requires both registration and operation of an infringing domain name to be in bad faith. Coexistence agreements or business relationships gone sour are better served by litigation with claims including the Anti-Cybersquatting Protection Act (ACPA). • Does the domain name itself infringe your trademark? While the content of challenged sites is relevant to the procedure, the UDRP can be used only where the domain name itself infringes a trademark. If the infringement occurs in the body of the website, a trademark or copyright lawsuit may better enforce your rights. • Are you seeking monetary damages? The UDRP has the authority only to order domain name transfers, not to award damages or other injunctive relief, which may be available in federal court. A UDRP case can be a targeted part of a comprehensive IP enforcement offensive, however, and can cut off an infringer’s online presence right out of the gate. • Is the domain name a .com or a new gTLD? If it is one of the new gTLDs, an even more efficient procedure called the URS (Uniform Rapid Suspension) is available under certain circumstances. Meaghan H. Kent mhkent@Venable.com +1 202.344.4481 Linda J. Zirkelbach ljzirkelbach@Venable.com +1 202.344.4410