As covered in other blog posts, domain names represent important assets for any business, and especially those in regulated substance industries, such as cannabis and alcoholic-beverage. Domain names function as business identifiers, helping disseminate information about a brand and attract potential customers. They also possess their own value as distinct assets of a company. Unfortunately, many profiteers seek to capitalize on the hard-earned goodwill by registering, without authorization and for improper purposes, domain names that match or closely imitate prominent brands—this practice is commonly known as “cybersquatting”.
Fortunately, the Internet Corporation for Assigned Names and Numbers (ICANN), a nonprofit organization tasked with administering the domain name system, established a policy to protect against cybersquatting– the Uniform Domain Name Dispute Resolution Policy (“UDRP”).
What is a Uniform Domain Name Dispute Resolution Policy (UDRP)
Implementing a robust and forward-looking domain name registration plan represents the best strategy for preventing cybersquatting. However, the UDRP offers brand owners a simple, quick and inexpensive method for addressing the unfortunate situations when cybersquatting does occur. In standard scenarios, UDRP disputes can be resolved quickly – within 45 days of the initial filing of a complaint – without many of the complexities of a full-fledged judicial fact-finding process.
The policy sets out the legal framework for resolving domain name disputes through arbitration rather than litigation in court. In a UDRP proceeding, a trademark owner can seek cancellation or the transfer a domain name away from a bad faith registrant. To stop a cybersquatter, the holder of trademark rights may initiate a UDRP proceeding by filing a complaint with an approved dispute-resolution service provider, such as the World Intellectual Property Organization (WIPO).
Requirements to Suspend Or Seize An Offending Domain Name
In order to prevail in the dispute and cancel, suspend or seize the offending domain name, the complainant must satisfy the following three requirements:
- The domain name registered by the respondent is identical, or confusingly similar, to a trademark or service mark in which the complainant has rights;
- The respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
All of these elements must be established in order for the complainant to prevail. If the complainant prevails, the domain name will be canceled or transferred to the complainant. However, the UDRP offers no financial remedies, such as fines or punitive damages.
How Heaven Hill Distilleries Protected Its Domain
Cybersquatting haunts businesses across all industries, including in the beverage space. Through diligent online monitoring, Heaven Hill Distilleries (“Heaven Hill”), a bourbon maker, uncovered a web address that substituted a lower case “L” for the “I” in Heaven Hill, creating the “heavenhlll.com” domain name. Seeking to seize this confusingly similar domain name, Heaven Hill filed a UDRP complaint with the WIPO Arbitration and Mediation Center.
Heaven Hill detailed in its complaint how it holds trademarks to HEAVEN HILL in the US, the EU, Japan, Mexico and elsewhere and has registered its domain names and other names containing the HEAVEN HILL mark along with variations of it. WIPO quickly processed the UDRP complaint, and less than three months later, after the domain name registrant failed to respond, the offending URL was transferred to Heaven Hill.
Conclusion: URDP Actions Can Protect Your Brand From Cybersquatters
Cybersquatting can dilute and harm a brand in many ways, including by drawing potential customers and business opportunities away from a business. The cost of a UDRP action could prove very worthwhile when a disputed domain is actually damaging a business. Cannabis, alcoholic-beverage, hospitality and other regulated industry businesses should consider UDRPs when they want to ensure that a specific URL will never be used in a harmful way again. The IP attorneys at Rogoway Law Group have extensive experience with these matters and are here to help!
