In other words, how to take down fake websites or scammers with your trademark, part two.

In part one, we discussed the exact steps to take if you discover a scammer has set up a fake website, impersonating your own. You can find that post here.

Arguably the most effective step is filing a UDRP (Uniform Domain-Name Dispute Resolution Policy) complaint. If you have discovered that someone is impersonating your website, contact your intellectual property attorney immediately. Time is of the essence in these instances.

The UDRP (Uniform Domain-Name Dispute Resolution Policy) allows for a proceeding known as a “domain dispute”, a legal proceeding to stop someone from using a domain that includes your company’s trademark. This proceeding is available as a cost-effective method of securing a domain registered in bad faith that infringes upon your trademark.

The UDRP is available to recover a domain name if the owner of the domain registered it in bad faith, or, is violating U.S. trademark laws (such as the Lanham Act) or anti-cybersquatting laws (such as Anti-Cybersquatting Consumer Protection Act).

What is a UDRP proceeding?

The Uniform Domain-Name Dispute Resolution Policy (UDRP) is an arbitration process that has been adopted by ICANN-accredited registrars. In other words, this is a mandatory arbitration proceeding for all generic top-level domain (“gTLDs”) including, .com, .net, .org and more. It also applies to second-level domain name registrations in the following gTLDs: .aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel and travel. The UDRP also applies to all New gTLDs.

In a UDRP proceeding, a trademark holder may initiate a mandatory arbitration proceeding against an infringer. The proceeding is decided by a private arbitrator (or arbitrators). If the arbitrator decides in the trademark holder’s favor, the arbitrator may transfer the infringing domain to the trademark holder.

Why is this so important in instances of infringement? Rather than just shut down the domain, only for it to potentially pop up later, a successful claimant in a UDRP gains actual ownership of the domain. In other words, you would be able to maintain control over the domain so that the scammer would not be able to perpetrate the same crime twice.

The proceeding itself often lasts approximately 4-5 months. While not instantaneous, this is significantly faster than typical litigation proceedings. Additionally, the vast majority of the time, you will not be able to find the scammer; they are likely hiding their actual information. Therefore, the UDRP is an extremely effective tool in handling international domain disputes.

How do I know if I can file a UDRP proceeding?

The UDRP is a policy agreed to between a domain registrar and the customer. While it is included in all ICANN-accredited registrars, you can contact an intellectual property attorney to determine if your gTLD offers the UDRP as a dispute resolution option.

Most importantly, you must have a trademark in order to be successful in a UDRP proceeding

This is likely the most important takeaway from this article: Under Section 4(a)(i) of the UDRP, a complainant must establish both that it has rights in a valid trademark and that the disputed domain name is confusingly similar to it.

In other words, if someone is impersonating your website, you will not have standing to bring a case in front of the UDRP unless you can establish trademark rights. Even if you are able to establish some weaker, inferior rights to what you claim to be your trademark, that weakness will factor into the panel’s analysis, and directly determine the outcome of the proceeding.

In other words, if you do not have a registered trademark, not only do you not own your business name; you have likely eliminated your own ability to shut down a scammer.

And keep in mind, small businesses make prime targets for scammers.

How much does a UDRP proceeding cost?

While yes, there are costs associated with filing a UDRP proceeding, they are significantly more cost effective than commencing a legal proceeding.

In order to begin a UDRP proceeding, the moving part must submit a fee based upon factors such as number of domains in dispute, and number of panelists, as well as the organization’s fee.

Two organizations offer UDRP arbitration proceedings: the World Intellectual Property Organization (WIPO) Arbitration and Medication Center and the National Arbitration Forum (the Forum).

WIPO Arbitration and Mediation Center:

Number of Domain Names Included in the Complaint	Single Panelist Fee (US Dollars)	Three Panelist Fee (US Dollars)
1 – 5	$1,500 (Panelist: $1,000; WIPO Center: $500)	$4,000 (Presiding Panelist: $1,500; Co-Panelist: $750; WIPO Center: $1,000)
6 – 10	$2,000 (Panelist: $1,300; WIPO Center: $700)	$5,000 (Presiding Panelist: $1,750; Co-Panelist: $1,000; WIPO Center: $1,250)
More than 10	To be decided in consultation with the WIPO Center	To be decided in consultation with the WIPO Center

National Arbitration Forum:

Number of Domain Names Included in the Complaint	Single Panelist Fee (US Dollars)	Three Panelist Fee (US Dollars)
1 – 2	$1,300	$2,600
3 – 5	$1,450	$2,900
6 – 10	$1,800	$3,600
11 – 15	$2,250	$4,500
16 or more	Contact the Forum for a fee quote: domaindispute@adrforum.com

What do you have to prove to win a UDRP proceeding?

First, a UDRP form can be found here. However, filling out the complaint form requires the moving party to prove elements of a legal argument. Namely, the complainant must establish that the infringing domain:

1. The domain has been registered and used in bad faith,
2. The domain name is identical or raises a likelihood of confusion with the moving party’s registered trademark,
3. The infringing party has no legitimate rights or interests to the domain name.

When arguing bad faith, the moving party has to comply with Section 4(b) of the UDRP, including:

• Section 4(b)(i) – The registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant, which is the owner of the trademark or service mark, or to a competitor for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name.
• Section 4(b)(ii) – The registrant has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the registrant has engaged in a pattern of such conduct.
• Section 4(b)(iii) – The registrant has registered the domain name primarily for the purpose of disrupting the business of a competitor.
• Section 4(b)(iv) – The registrant has used the domain name to attempt to attract, for commercial gain, internet users to its website or other online location by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation or endorsement of the registrant’s website or location or of a product or service on the registrant’s website or location.

In conclusion,

While there are simply nefarious actors who can very easily wreak havoc on online business owners, the UDRP is an incredibly effective tool for protecting your online business. If someone is using your registered trademark in their domain name, or flat-out impersonating your website, time is of the essence. Contact our offices to schedule a call.