Domain name enforcement broadened

• Published in: Managing Intellectual Property
• Main Authors: Karen Artz Ash, Danow, Bret J
• Format: Trade Publication Article
• Language: English
• Published: London Euromoney Institutional Investor PLC 01-03-2011
• Subjects: Alternative dispute resolution; Bad faith; Federal court decisions; Litigation; Trademarks; United States > US
• ISSN: 0960-5002

In the US, trade mark owners typically have two options to prevent the misuse of their marks as part of domain names, namely filing a complaint pursuant to the Uniform Domain Name Resolution Policy (UDRP) and seeking relief pursuant to the Anti-Cybersquatting Consumer Protection Act (ACPA). The UDRP provides a mechanism for resolving disputes concerning an alleged abusive registration of a domain name. The UDRP is intentionally designed to be an expedited process without the costs associated with litigation and, therefore, provides a relatively straightforward three-prong test setting forth the criteria that a trade mark owner must satisfy in order for a UDRP complaint to be successful and thereby compel the transfer of the domain name. If the claimant cannot demonstrate all three prongs, the complaint will not be successful. The most difficult prong of the UDRP's test for a trade mark owner to satisfy is typically the third prong. This requires that the trade mark owner must demonstrate that the domain name at issue has been registered and is being used in bad faith.