Domain Name Disputes
Your trademark on their URL. Not for long.
Your domain name is where customers, search engines, and email expect to find you, and a cybersquatter who registers an infringing domain can divert your traffic, run a scam under your brand's name, or hold the name for ransom. Hank has recovered hundreds of infringing domain names for Fortune 500 companies, celebrities, professional athletes, and other trademark owners, and recovery runs along one of two tracks, an administrative proceeding or a federal lawsuit, depending on how the registrant behaves and what you want back.
Most recoveries start with the Uniform Dispute Resolution Policy ("UDRP"), the dispute policy every registrant agrees to when registering a domain name. Hank files complaints with the WIPO Arbitration and Mediation Center with evidence to support the three elements the UDRP requires, that the domain is identical or confusingly similar to your trademark, that the registrant has no legitimate interest in it, and that the registrant registered and uses it in bad faith. A panel decides on the written record, with no live hearing, and orders the domain transferred or cancelled, which recovers the name in weeks rather than the months or years a lawsuit takes.
When a domain registrant hides its identity, cybersquats across multiple domains, or you want to recover monetary damages, the matter often belongs in federal court under the Anticybersquatting Consumer Protection Act. That statute applies to anyone who registers or traffics in a domain with a bad-faith intent to profit from another's mark. A court can award statutory damages from $1,000 to $100,000 per domain, order the name transferred, and hear an in rem action against the domain itself when the registrant can't be found or served with legal process. Hank also defends the other side of these disputes, the legitimate registrant a brand owner tries to muscle off a domain it has every right to keep, where an overreaching complaint can amount to reverse domain name hijacking.
Hank has handled domain disputes for global brands protecting a trademark, public figures reclaiming their name, and registrants defending a domain they registered legitimately. Every engagement works toward the same result, the right party in control of the name, recovered through whichever forum gets it back fastest and for good.
Services Include
- UDRP recovery at WIPO
- ACPA cybersquatting litigation
- In rem actions against domains
- Typosquatting and brand-abuse claims
- Reverse domain name hijacking defense
- Cease-and-desist and demand letters
- Domain portfolio and registrar disputes
- Settlement and transfer agreements
Domain Name Disputes Insights
Reverse Domain Name Hijacking and When the Trademark Owner Goes Too Far
ICANN designed the UDRP to protect trademark owners from cybersquatters who register domain names in bad faith. But during the drafting process, commentators raised a concern that went in the other direction. A streamlined administrative proceeding that can transfer a domain name in 60 days, with no discovery, no live hearing, and no monetary consequences for losing, could also be used by trademark owners to take domain names from registrants who had every right to keep them.
Read articleTyposquatting, Brandjacking, and Domain-Based Brand Abuse
Typosquatting is the registration of domain names that exploit predictable user errors, misspellings, transpositions, missing characters, and wrong TLD extensions, to intercept traffic intended for a trademark owner's legitimate site. It's one of the most common forms of cybersquatting, and it's also one of the hardest to police because the number of possible permutations for any given brand name runs into the hundreds or thousands.
Read articleDomain Disputes Beyond .com, New gTLDs, Country Code TLDs, and the URS
Most domain name disputes involve .com, and for good reason. It's the most commercially valuable extension, the one consumers type by default, and the one cybersquatters target first. But the domain name system has expanded far beyond .com, and brand owners who limit their monitoring and enforcement to a single TLD leave significant exposure unaddressed.
Read articleDomain Strategy and Trademark Protection for Online Brand Security
Domain name disputes are reactive by nature. A cybersquatter registers your mark, you file a UDRP complaint or an ACPA lawsuit, and you recover the domain after spending money and time on a problem that didn't need to exist. Every article in this series describes a tool for fixing a problem after it's happened.
Read articleHow the UDRP Process Works and What You Need to Prove
A trademark owner who discovers that a cybersquatter has registered a domain name incorporating the owner's mark has two primary enforcement options. One is federal litigation under the Anticybersquatting Consumer Protection Act, which is covered in a separate article.
Read articleThe Anticybersquatting Consumer Protection Act and When to Sue in Federal Court
Most domain name disputes can be resolved through a UDRP proceeding at WIPO or another provider. A UDRP complaint costs $1,500, takes roughly two months, and can transfer the domain name to the trademark owner. For many cybersquatting cases, that is sufficient.
Read articleIn Rem Actions Under the ACPA and How to Recover a Domain When You Can't Find the Registrant
Cybersquatters frequently conceal their identities. They register domain names using aliases, provide false contact information to registrars, hide behind privacy or proxy registration services, and operate from jurisdictions where U.S. courts cannot reach them.
Read articleHow UDRP Panels and Federal Courts Decide Bad Faith Registration and Use
Bad faith is the element that determines most domain name disputes. Confusing similarity between the domain name and the trademark is usually easy to establish. Rights or legitimate interests can often be addressed through burden-shifting.
Read articleLegitimate Interests and When the Registrant Has a Right to Keep the Domain
A registrant can incorporate someone else's trademark in a domain name and still have every right to keep it. Domain names consist of words, and words have meanings beyond their trademark significance. A registrant who selected a domain name for its dictionary meaning, who operates a legitimate business under that name, or who uses it for noncommercial commentary has rights or legitimate interests that defeat a UDRP complaint, regardless of how famous the complainant's mark may be.
Read articleRelated Work
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