Advertising Law Tool Kit 13th Edition 2025

Venable / 31 30 / 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) (e.g., .com or .net) is a Uniform Domain Name Dispute Resolution Policy (UDRP) proceeding. The UDRP is a binding arbitration program built into the registration policy of every standard gTLD domain name. For a relatively low filing fee, brand owners can institute a UDRP proceeding to challenge an infringing domain name registered anywhere in the world. Decisions are rendered on the pleadings and often issued within weeks of filing. A successful challenge automatically transfers the offending domain name to the brand owner to use or delete as it sees fit. Consider these factors when deciding whether to bring a UDRP action: • Do you know the domain registrant’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. Disputes involving breached coexistence agreements or business relationships gone sour may be better served by litigation with claims including violation of the Anti‑Cybersquatting Protection Act (ACPA). • Are there complicated legal issues such as fair use? In some cases, you may be better served by filing a lawsuit in federal court if you anticipate complicated issues of facts and law, such as in cases where a fair use or other defense might apply. • 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 only in the body of the website, a trademark or copyright lawsuit may better enforce your rights. In some egregious cases where both the domain name and the body of the website are infringing, some web hosts will—at the UDRP complainant’s request—remove all content from the website while the UDRP proceeding is pending. • Are you seeking monetary damages or immediate relief? 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 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. It takes approximately 45-60 days for a UDRP decision to be issued and for the domain to be transferred. If you are looking for immediate injunctive relief (e.g., if the infringement is causing imminent and irreparable harm, or consumers are being defrauded), a federal lawsuit may better enforce your rights. • 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. Other top‑level domains (e.g., country code top-level domains, such as .us or .ca) may have their own dispute resolution mechanisms. Sharoni S. Finkelstein ssfinkelstein@Venable.com Linda J. Zirkelbach ljzirkelbach@Venable.com