Blog

By Purple Fox Legal

August 24, 2022

In today’s fast-paced, digitally-connected world, business owners are almost required to be present online. This is one of the only ways to connect with certain consumers, and almost everyone looks for their information on the Internet. But, to send your customers to a website designed specifically for your business, you’ll have to register for a domain name. 

This article shares everything business owners need to know about domain names and protecting them. We will cover what a domain name is, and how you can register one. Then, we will discuss the best ways to protect your domain name with the Uniform Domain-Name Dispute-Resolution Policy (UDRP), and how to file a complaint if your domain name (a.k.a. trademark) has been infringed upon.

What is a Domain Name?

Often referred to simply as a “domain,” this is your website’s equivalent to a physical address. Your domain name is the unique identifier that people and computers will use to access your website and brand. For example, “purplefoxlegal.com” is a domain name that points to this website.

How Can I Obtain One?

Terms that are readily available and unprotected by another’s trademark can be purchased and used as a domain name. Thankfully, applying for, and obtaining a domain name is much easier than you might think. It’s most important to do your research on the domain name registrar you choose to use though and to choose the most effective name for your brand. 

Can You Register a Domain Name as a Trademark?

Registering your domain name gives you exclusive (but temporary) rights to that IP address, but it doesn’t prevent others from using something similar for their own business operations. This is where trademark protection comes in handy. 

Domain names may be registered with the U.S. Patent and Trademark Office (USPTO). However, domain names cannot be registered as a trademark just because they serve as your address on the Internet. In order to qualify as a trademark, your domain name must be used in interstate commerce and be distinctive to your brand. 

Protecting Your Domain Name with the UDRP

Anyone who registers a domain name is bound by the rules and standards of the UDRP. This policy has been established to help set guidelines for domain name disputes and ensures that trademarks remain protected, even on the Internet. The UDRP is also useful for preventing cybersquatting and domain name exploitation. 

What is the UDRP

The Uniform Domain-Name Resolution Policy (UDRP) provides a legal guidebook for settling disputes between domain name registrants. The policy was developed by ICANN (the Internet Corporation for Assigned Names and Numbers) to help prevent a domain name “land grab” and the exploitation of business owners. 

The policy was actually developed out of necessity when nefarious “cybersquatters” went through registering trademarked terms as domain names. They did this to gain capital by eventually selling the domain name to the trademark owner at a steep upcharge. So in response, ICANN developed and adopted a set of rules and procedures (UDRP) to help facilitate these situations. 

Filing a UDRP Complaint

Most domain name disputes are handled by the UDRP, and filing a complaint through this policy is one of the best ways to handle an alleged cybersquatter. UDRP complaints are required to meet three elements to be considered. These are:

1. The domain name must be identical or confusingly similar to the owner’s trademark or service mark. 
2. The current owner of the domain name must have no rights or legitimate interests in the disputed name of the domain. 
3. Proof that the domain name was registered and is still being used in bad faith. 

When Should You File a Complaint with the UDRP

If you believe that a cybersquatter is sitting on your trademark to force you to spend unnecessary money, it might be time to file a complaint through UDRP. Remember, you will be required to prove your case, so it’s important to do your necessary research and preparation beforehand. Some questions you should ask yourself before filing a claim are:

• How strong is my trademark?
• How will I prove the “bad faith” element?
• What information will I submit to prove my case?
• Do I know when the domain name was registered?
• Can I demonstrate ownership of my trademark?

Tips for Proving Your UDRP Claim

Because you are required to prove your complaint through the UDRP, the successful acceptance of your claim hinges on the proof you’re able to provide. If you’re unable to prove trademark rights or satisfy the other components of a trademark claim, you will not gain access to the registered domain without going through the owner first. To build your case and maximize your chances of success, you must take time to prepare. If you’re working with a common law trademark, it will be more difficult to build your case, but not impossible. Those filing a UDRP complaint with a common law trademark should provide as much documentation as possible. Some documentation that might be helpful includes:

• Advertising costs and examples
• Media coverage of your brand
• Sales figures
• Consumer surveys 

Even with all the necessary documentation and evidence, it can still be difficult to build a complaint with the UDRP. This is where an experienced and educated attorney can really come in handy. Legal counsel and guidance in these instances can help streamline your complaint and prevent the development of kinks in the process.