What do you do when you find that someone has obtained the same domain name as you and is using it to compete or drive customers away from your website?

In this situation, the results or outcome of any action you take against the other party will depend on if you have a registered trademark which is the same or very similar to the domain name in question (the “Infringing Domain”).

Having a registered trademark allows you to effectively use the procedure set out under the Internet Corporation for Assigned Names and Numbers (“ICANN”).  This is an international body set up to protect, amongst other things, the unlawful registration of domain names.  When every domain name is registered with an accredited registrar (such as Godaddy, Tuscows, etc) the person registering the domain agrees to following the mandatory ICANN’s dispute policy procedure should a dispute arise following the registration.

This procedure is an arbitration dispute resolution process which is run by ICANN providers.  These providers follow the ICANN’s rules and procedure to resolve domain name disputes.

What is the ICANN dispute procedure?

If you find that someone has registered an Infringing Domain, you can submit a complaint to a ICANN’s service provider.  That provider runs the dispute procedure. They ensure that the registered owner of the Infringing Domain is provided with a copy of the complaint and gives them a time limit to respond.  Your complaint must prove that the registered owner of the Infringing Domain has breached your registered (or common-law) trademark and that the Infringing Domain name is:

a)      Identical or confusingly similar to the trademark or servicemark that you have rights in;

b)      The registered owner of the Infringing Domain Name has no rights or legitimate interest in the Infringing Domain; and

c)      The Infringing Domain has been registered and is being used in bad faith.

All three of these elements must be proven to reach a finding in your favour.  If you are successful then you can request either that the Infringing Domain is cancelled or transferred to you.  The only way to protect the Infringing Domain from being registered to someone else is to request that it is transferred to you if the panel reaches a decision in your favour.

The transfer process is relatively straightforward as the registrar of the Infringing Domain contacts you directly to arrange the transfer.  The original registered owner does not have to consent to the transfer.

There are several advantages of following the ICANN’s procedure, the main advantage being that once you have filed a complaint it places a ‘freeze’ on the registration of the Infringing Domain, so the owner is unable to transfer it until the complaint has been resolved.  In addition, the process is timely.  Most complaints seem to be resolved within two months of filing the original complaint.  This is significantly quicker than taking legal action through the courts.  The cost of the process is relatively inexpensive compared to commencing litigation.

We have recent experience using the ICANN dispute resolution process to successfully transfer a Infringing Domain to our clients.  This result was mainly due to their ownership of a trademark that was part of the Infringing Domain.

Should you have any trademark or domain name queries, we would be pleased to discuss them with you.