The Uniform Dispute Resolution Policy is a policy the Internet Corporation for Assigned Names and Numbers [ICANN] approved for domain name disputes. Every respondent in Arbitration proceedings instituted in line with the UDRP as aforementioned should have a solid UDRP defense strategy before they submit their Response to a UDRP complaint filed against them for a domain name they own, else, they can lose their domain name. In this article, we will examine the defenses available to a respondent in a UDRP dispute instituted before any of the approved Dispute Resolution centers that handle such disputes.
Overview of the UDRP
The Uniform Domain Name Dispute Resolution Policy is a process established by ICANN regarding domain name disputes on the Internet. This Policy provides an international enforcement mechanism for trademark holders to challenge the ownership, registration and use of domain names which they believe infringe on their existing trademarks. To ensure that every owner of a domain name is bound by the UDRP, this is mandatorily included as a term of service when a user is purchasing a domain name from a domain name registrar. This makes it easier for trademark holders to be able to quickly commence proceedings against respondents in respect of domain names they believe infringe on their trademarks without having to worry about international legal jurisdictions.
Should you defend your domain as a respondent?
The truth is quite simple: not all domain name owners register their domains in good faith. Some are bad-faith actors who register domain names they legitimately have no interest in because they are actual cybersquatters trying to profiteer off the trademark and goodwill of a trademark holder. If you registered your domain name in good faith, then it would make sense to craft a UDRP defense strategy for any UDRP notice of dispute which you receive. If you are unsure about whether you registered and hold your domain name in good faith, it might be a good idea to consult with legal professionals that specialize in domain name disputes under the UDRP to evaluate your case and assist you make an informed decision.
Importance of filing a timely response to a UDRP complaint
Upon receiving a notice of dispute in respect of your domain name, a respondent typically has twenty calendar days to file a response to the said UDRP complaint from the date of receipt of the official complaint notification in respect of the affected domain name. It is thus very important to prepare and file a defense if you intend to defend your domain name in the Arbitration proceedings, as failure to do so will lead to the appointed arbitration panel proceeding with the case and determining same even in your absence. Their determination of the complaint in your absence can lead to them either transferring the domain name to the complainant or de-registering the domain name.
Steps to take after receiving a notice of dispute to a UDRP complaint
- Upon receipt (usually electronically via your registered email in the records of your domain name provider) of the complaint, the very first action to take is to review the UDRP complaint and understand the claims the complainant is making against you with respect to the disputed domain name.
- If you registered the domain name in bad faith, or that you are a cybersquatter, you can choose to ignore the complaint and let the arbitration take place without you filing your UDRP defense.
- If you intend to file a UDRP defense, then you should gather any evidenced you have regarding that domain name that will be relevant to you, together with supporting documentation you will use for your defense. These documents include the documentation of domain name registration, evidence of good-faith use of the domain, website traffic data; if you are using the domain name for a business, then you provide evidence of proof of registration of the business which is relevant to that domain name, among others.
- After gathering your documents, you should consult with a legal practitioner who is well-versed in UDRP disputes and handles such cases. This is not mandatory, but we recommend it if you do not understand the intricacies of the International legal system especially as it relates to the protection of trademarks.
Complainant’s claims: What they have to prove in a UDRP arbitration
UDRP disputes are just like ordinary disputes, and the burden of proof rests on the complainant to prove their claim against you in respect of the domain name they are laying a claim to. In UDRP proceedings, the complainant has to prove any of the following claims:
- Trademark infringement: Here, the complainant is asserting that the respondent’s domain name violates their existing trademark rights as the disputed domain name is confusingly similar to a trademark or service mark which they own or have rights over.
- No legitimate interest: The complainant has to establish that the respondent has no legitimate interest in the disputed domain name and registered and used same in bad faith.
- Claims of Bad-faith Registration and Use: The complainant has the onus to prove that the respondent registered the disputed domain name in bad faith and is using same in bad faith as well. A classic example of bad-faith use would be where a cybersquatter registers a domain and uses same to intentionally attract users who would ordinarily use the complainant’s services or patronize the complainant. Another example would be where the respondent is using the disputed domain name to disrupt the complainant’s business. The complainant has the onus to prove this.
UDRP Defenses available to the Respondent
Receiving a notice of dispute in respect of a domain name you own is not in itself the end of that domain name in question for you, even if the complainant has alleged different claims against your usage of the said domain. We will outline some of the defenses that can avail you as a respondent below:
Demonstrate Legitimate interest in the domain name
Show you actively use same for business: As a respondent, you can show that you are actively using the domain name for a legitimate business purpose. For example, you registered the LLC “Annotated Group LLC” and then registered a domain name for it; the domain name now in dispute. As a defense to the dispute you can demonstrate active use of the registered domain name for the provision of goods and services to your target audience, or that you are using the domain name to provide information relevant to your target audience with regards to the service/business/products you offer.
Show you have pre-existing investments and plans for the domain name: As a respondent, if you had created plans and made investments regarding the use of the domain before the complainant registered their trademark, you can further use this claim to substantiate a legitimate interest in the disputed domain name in your favour.
Show you have been commonly known by the disputed domain name: As a respondent you have been commonly known by that name, it can be a solid ground of defense to demonstrate that you have legitimate interest in that domain name, even if you did not register any corresponding trademark in respect of same.
Demonstrate you had no bad faith intent in the registration of the domain name
Showcase prior registration of domain name: You can show a prior registration and use of the domain name; in other words, that your existing domain name predated the complainant’s trademark. If the timeline of your domain name registration records can show that same was registered before the complainant registered their domain name, then you can easily demonstrate that you could not have registered your domain name with the intention of exploiting the complainant’s trademark.
Demonstrate good-faith use of the disputed domain name: Another solid UDRP defense that can demonstrate good faith is to show that you have been using the disputed domain name in a way that does not compete with or in any way tarnish the complainant’s trademark. So, if you have been using the domain name for a legitimate business, or that the domain name is used as a non-commercial site that is not being commercially exploited, these indicate good faith. You should note that what amounts to “good-faith” use of a domain name is subjective and depends on the particular circumstances surrounding your use of the domain name.
Demonstrate lack of bad faith: You can demonstrate that you have acted solely in good faith regarding your use of the domain name. For example, you can showcase that you have never attempted to sell the domain name back to the complainant for profit, or that you have tried to sell the domain name to the complainant’s competitors, or even tried to misleadingly divert users of the competitor’s services to yourself through the domain name.
Preparing and filing your UDRP Defense
In preparing your UDRP defense, it is important to carefully and methodically set out your points of defense, if you are sure you wish to defend your ownership and use of that domain name. You should also meticulously gather all documents which will be relevant to your defense. You should compile:
- Evidence of legitimate use of the domain name
- Domain name registration records
- Business records
- Website webshots
- Website traffic reports and statistics
- Financial statements showing the site’s activities and profit
- Evidence of any legitimate rights claimed in respect of the domain name
- Correspondence and communications logs that can show domain name history and purpose [if you can provide this]
- Evidence that counters claims of bad faith use such as evidence showing that the disputed domain name predates the complainant’s trademark.
- If you can, provide UDRP case numbers that are similar to yours where a complainant’s claims failed.
While preparing your UDRP defense, it is very important to address each of the complainant’s claims against you methodically and carefully, while also providing evidence from your end as “Annexes”. If you are unsure about how to craft your defense, please contact a Firm of lawyers who have experience in UDRP disputes to assist you with your defense.
Conclusion
Receiving a notice of dispute in respect of your owned domain name from a complainant alleging claims over that domain name is not the end of that domain for you. You can have a good case, and you can make a case good enough to warrant the proceedings going in your own favour in the course of the arbitration proceedings. Just have your UDRP defense arguments and ensure they are legally sound arguments which can buttress the point that you own the domain name in good faith.
Kindly note that this Article is provided for information purposes only and for general guidance on the UDRP defenses available to a respondent in a domain name dispute. It does not constitute legal advice.
If you own a domain name and received a notice of dispute in respect of an owned domain name and you are unsure of what to do or how to go about your defense, we invite you to reach out to us at contact@kabbizlegal.com and we will be happy to provide some guidance.
This article was written as a thought leadership post for our Domain Name practice group.
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