Trademark Uniform Domain Dispute

NOTICE: Information provided below does not constitute legal advice and the author assumes no liability for use.

UPDATE: Online filing is no longer supported. You must download the complaint form to then e-mail as PDF. Payment is not straight-forward and must be made before submitting the complaint. Arguing the complaint should be non-English is another tactic cyber-squatters use to make the process more difficult.

When cyber-squatters abusively register domain names of trademark holders, the best resolution is to file a Uniform Domain-Name Dispute-Resolution Policy (often referred to as the “UDRP”) complaint with an approved dispute resolution service provider. This proprietary procedure is a guide through the process of submitting a domain name trademark dispute specifically using the leading provider, the World Intellectual Property Organization (WIPO). The desired outcome is to resolve domain name disputes involving trademark rights efficiently, by transferring the infringing domain to the trademark holder.

ALERT: Conglomerates like GoDaddy often offer premium domains by representing foreign cyber-squatting registrars hiding behind 3rd party domain resellers like Afternic.

NOTICE: Research and development to create this proprietary procedure and submit a first complaint required approximately 24 hours with review of over 300 pages of material and associated example flowcharts or videos.

Requirements

• Trademark registered at the United States Patent and Trademark Office and related domain name registered by an unrelated party.
• Assistance of a lawyer may be helpful, but there is no requirement that the Complaint be prepared or submitted by a lawyer.
• Filings outside of business hours or on weekends and holidays are processed the next working day.
• Generic Top-Level Domains (gTLD) like .com, .net, and .org in dispute must be registered before 2013.
• Copy of the complaint is automatically sent to the concerned registrar listed in WHOIS.
• Single panelist is recommended for straightforward cases with clear trademark rights and blatant domain name abuse.
• Failing to provide sufficient evidence or meet all requirements may result in your dispute being dismissed.
• Online submission domain name case with Annex PDF attachments will be e-mailed to you after submittal.
• Fees for single panelist, 1-5 domain disputes are $1,500 ($1,000 panelist, $500 for WIPO) and payment type of credit card is recommended (non-refundable regardless of outcome). If you win, you must often pay a transfer fee of $500.
• Preparation steps will take approximately 30 – 60 minutes. Submitting a complaint takes approximately 1-2 hours. WIPO notifies registrar to lock the disputed domain within 48 hours, then provides the respondent 20 days to respond, rulings often take up to 2 months, and domain transfers are allowed another 10 days.

Preparation Steps

1. Search and print to PDF WHOIS at ICANN that will list the domain registrant information with any proxy/privacy e-mail address for respondent information (Annex-1-ICANN-Lookup.pdf).
2. Find Registrar on ICANN List of Accredited Registrars and then search and save to PDF WHOIS for contact information.
3. Google for “[Registrar name} Domain Registration Agreement” to then print to PDF (Annex-2-Domain-Registration-Agreement.pdf) and copy URL for evidence.
4. Save a screenshot of any associated webpage for the domain in English for evidence of mutual English language understanding (Annex-3-GoDaddy-Afternic-English-Webpage.PNG).
5. Use Trademark Electronic Search System to obtain your trademark serial number print certificate to PDF. (Annex-4-Trademark-Certificate.pdf)
6. Create and save as PDF an Annex Summary with a table of Annex #, Description, and File Name. (Annex-5-Annex-Summary-List.pdf)
7. Create a WIPO account for payment with complaint submittal.
8. Check the complaint filing guidelines. and panel discussions.
9. Download a copy of the complaint form to complete for your records.

Filing Complaint

1. Go to WIPO Online Complaint (Be sure to read the instructions at the bottom of each section which often have helpful tips not on the example download template).
2. Enter Complainant (corporation recommended) and Respondent (often privacy service listed in WHOIS) contact information.
3. Complete the Parties (some info will auto-fill from previous section) and Communications Method.
4. Provide Respondent information with Annex 1 (Printout of Whois search for domain in dispute).
5. Enter “English” in the Language section with Annex 2 (domain registration agreement), Annex 3 (domain for sale webpage in English) and supporting text like “Registrar domain registration agreement and webpage offering disputed domain for sale are both in English. English is the global language of business.“
6. Enter Jurisdiction by finding/entering Dispute section title of Registrar Domain Registration Agreement, supporting URL, and providing the Registrar name of disputed domain.
7. Enter Factual and Legal Grounds per examples in next section below for confusing similarity, no respondent trademark rights, and use in bad faith.
8. Select Remedies of Transferred to Complainant.
9. Select Claimant Elects to have dispute decided by Single Member Administrative Panel.
10. Select Mutual Jurisdiction of (a) the location of the principal office of the concerned registrar.
11. Enter “has” and the DATE for Communication and e-mail complaint to respondent.
12. Enter Payment of $1,500 and Credit Card.
13. Choose File and upload for Annex 1 – 5.
14. Submit complaint by entering digital signature like /* Your Name */ and clicking Submit Complaint.

Factual and Legal Examples

A. The domain name(s) is(are) identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

Complainant, Kevin Fream, is the holder of trademark registration Serial No 87-928,397 for “Cyberist” under CLASS 42, covering information technology consulting services. The Complainant’s first use in commerce dates back to February 2, 2001 (Annex 3). Evidence of use in commerce may be verified at https://kevinfream.com and https://matrixforce.com. Respondent, Whois Privacy Services by DOMAINCA, has registered the domain name “Cyberist.com” which is either identical or at minimum confusingly similar – except for the generic domain suffix “.com” that does not constitute a distinguishing feature.

B. The Respondent has no rights or legitimate interests in respect of the domain name(s);

Respondent, Whois Privacy Services by DOMAINCA, should be considered as having no rights and has not demonstrated any legitimate interests or rights in the domain name “Cyberist.com”. The domain name currently resolves to a webpage by GoDaddy and Afternic, where it is offered for sale. The absence of any active use for legitimate commercial purposes for a bona fide offering of goods or services underscores the Respondent’s lack of rights or legitimate interests in the domain name. The Respondent, as an entity, has not been commonly known by the domain name “Cyberist.com.” The domain name corresponds to the Complainant’s registered trademark, and the Respondent’s lack of any association or identity with the term “Cyberist” further indicates that the Respondent does not possess rights or legitimate interests in the domain name.

C. The domain name(s) was/were registered and is/are being used in bad faith.

The Respondent has registered the domain name “Cyberist.com” in bad faith primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the owner of the trademark (the Complainant) or to a competitor of the Complainant for valuable consideration. This is evident from the fact that the domain name is actively listed for sale on the Afternic domain resale platform at https://cyberist.com (Annex 3). The Respondent’s actions in offering the domain for sale clearly demonstrate an intent to profit financially by exploiting the Complainant’s trademark rights.

After Claim Submittal

1. Print a copy of the online submittal to PDF and a copy is e-mailed to you with Annex PDF attachments.
2. Pay for your domain name case at WIPO Pay.
3. Upload or save all documents for your records and use in other disputes.
4. Standby and respond as necessary for periodic WIPO and registrar e-mails for 60 – 90 days.
5. Expect delays in Domain Transfer as well, knowing no part of this process is quick or easy and you will have to track diligently.

Follow-up (If You Don’t Win):

If the decision is not in your favor, you can consider legal recourse in your jurisdiction or explore alternative dispute resolution methods. Review the decision carefully and consult with legal counsel to determine the best course of action for your specific case. Remember that WIPO’s decision is binding on the domain name holder, so they will need to comply with the decision.