What to do when a Web site tries to steal your thunder
There is no limit to human ingenuity, and just as soon as solutions to trademark infringement are drawn up, new ways of circumventing them are always being invented.
The Internet age has opened numerous opportunities for businesses, whether through new avenues for advertising (such as alongside search engine results), new channels through which to sell products (such as online marketplaces), and even new ways of offering services (such as Airbnb or Uber). In these Internet-centric times, the primary point of contact by which companies connect with customers is often through a Web site. And these Web sites usually bear the name of the company’s brand, or what is more commonly referred to by intellectual property lawyers as its “trademark.”
But trademark law is relatively fragmented, such that brand owners are granted protection on a per-country basis. On the other hand, there is only one Internet throughout the entire world, and a Web address can only point to one Web site, no matter how many people clamor for a particular name. So, the unitary nature of the Internet sometimes conflicts with the territorial nature of the world’s trademark laws.
One of the more famous examples of this kind of conflict is the Web site www.nissan.com. The name “Nissan” is most closely associated with the Japanese car manufacturer, Nissan Motor Company. Considerably less prominent is Nissan Computer Corporation of North Carolina, which is named after its owner and namesake, Mr. Uzi Nissan. Unfortunately for the car maker, they were beaten to the punch when Mr. Nissan registered the Web address www.nissan.com, �
and refused to give up its rights to the Web address despite several demands. In a sensational case that went all the way up to the US Supreme Court, Nissan Computer rebuffed Nissan Motor’s claims of trademark infringement and cemented its claim to the Web address. Today, www.nissan.com leads to a tribute Web page dedicated to informing the public about the case and spreading word of what the site’s owner deems to be “unacceptable corporate behavior” by Nissan Motor.
Every day, there are numerous cases just like this.
Sometimes, these cases involve much less scrupulous personalities who are clearly out to take advantage of innocent trademark owners (and their unwitting customers) to squeeze a juicy profit. It is precisely to address this potential abuse that the Uniform Domain-Name Disputeresolution Policy, or the UDRP, was formulated.
The agency behind the UDRP is called ICANN, or the Internet Corporation for Assigned Names and Numbers. ICANN’s mandate largely involves the administration of the Internet’s Domain Name System. In layman’s terms, that means ICANN is responsible for ensuring that when you type in www.google.com, your Internet browser opens the search engine operated by Google, Inc., instead of leading you to some fake news portal or other dubious Web site. ICANN drew up the UDRP to address what it saw as “the trademark dilemma” inherent in the domain name system, where trademarks might be used as domain names without the trademark owner’s consent.
A UDRP claim is initiated by submitting a Complaint electronically to any ICANN-accredited UDRP provider (the list of accredited providers is available on ICANN’s Web site). The UDRP provider will inform the particular domain name registrar, which registered the domain name on behalf of the registrant, of the complaint. The registrar will in turn notify the respondent, who will then submit its response. The proceedings are generally governed by the Rules for Uniform Domain-Name Disputeresolution Policy ( likewise available on ICANN’s Web site), and the Supplemental Rules of the Provider administering the proceedings, as posted on its Web site.
To prevail in a UDRP proceeding, the claimant must prove that:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the registrant has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
To prove bad faith, the existence of following circumstances, among others, may be shown by the claimant:
(i) circumstances indicating that the domain name was registered or acquired primarily for selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration exceeding the documented out-of-pocket costs directly related to the domain name; or
(ii) the domain name was registered to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, if the registrant has engaged in a pattern of such conduct; or
(iii) the domain name was registered primarily for disrupting the business of a competitor; or
(iv) by using the domain name, the registrant intentionally attempted to attract, for commercial gain, Internet users to its Web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Web site or location or of a product or service on the Web site or location.
If the complainant prevails, the administrative panel that presided over the case will forward its decision to the registrar, which will cancel, transfer, or otherwise make changes to the domain name registrations pursuant to the decision.
The UDRP is a non-exclusive remedy, so either party may still file a case in a court of competent jurisdiction to resolve the dispute, notwithstanding the decision of the panel. In general, that jurisdiction is either the location of the registrar’s principal office or of the registrant’s address. Between the UDRP proceedings and the court, the decision of the latter prevails.
The UDRP has so far proven to be an effective tool for preventing abuses on the Internet. However, there is no limit to human ingenuity, and just as soon as solutions like the UDRP are drawn up, new ways of circumventing them are always being invented. As such, trademark owners should continuously be vigilant in protecting their rights, and agencies such as ICANN should continuously innovate in creating effective remedies like the UDRP.
The views and opinions expressed in this article are those of the author. This article is for general informational and educational purposes and is not offered and does not constitute legal advice or legal opinion.