Domain names are crucial to nearly every company, organization, and individual trying to grow or maintain a brand. Furthermore, because of a domain name’s significance they can often undermine a party’s federal registered trademark. For example, if a competitor buys a domain name related to a good your company sells or if your company forgot to maintain the domain name and another party buys it in hopes to sell it back to you at a premium price, you may be able to have the domain name transferred to you.
Domain names are managed by the Internet Cooperation for Assigned Names and Numbers (“ICANN”). Domain name disputes are filed in accordance with the Uniform Domain-Name Registration Policy (“UDRP”) and is decided by 1 or 3 World Intellectual Property Organization (“WIPO”) panelists. The party filing the complaint must satisfy the following three elements to be successful in having the domain name transferred to her or him.
- The domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights;
- The domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
- The domain name has been registered and is being used in bad faith.
There is a common misconception that if the respondent fails to respond to the complaint within the allotted time frame (20-24 days), the complainant will win by default. This is NOT true. The complainant has the burden of properly meeting all three of the above criteria. If all three elements are not met then the WIPO panelist(s) will decide in favor of the respondent even though they did not respond to the complaint.
The cost of filing a domain name dispute depends on the number of domain names being disputed and the number of panelists being requested. For example, the cost to file a complaint to dispute 1-5 domain names will be $1,500 for 1 panelist to decide the dispute and $4,000 for 3 panelists to decide the dispute. The price increases for disputes regarding more than 5 domain names. Having an attorney prepare a complaint or response to a complaint is highly recommended.
If you have any questions about domain name disputes or are seeking representation in a dispute, please call us at (904) 717-6325. Initial consultations are free and we will provide fixed prices, if requested.