Brendan Peters

Domain names are the addresses we type into our internet browsers to be taken to a website, like ‘stewartmckelvey.com’. Even easy-to-remember domain names can be confused with similar ones, making them a vector of attack for bad actors. A comprehensive study published this year by the European Union has confirmed that domain name abuse is a persistent and growing issue globally. Over a three-month period, the authors recorded a staggering 2.7 million incidents and 1.68 million abused domain names.

Raising awareness of these threats and what to do about them is one step towards a safer cyber future, and this post reviews an accessible and efficient mechanism for resolving domain name disputes.

Addressing confusion: Uniform Domain Name Dispute Resolution Policy

To address domain name abuse, the World Intellectual Property Organization (“WIPO”, an agency of the United Nations) began administering the Uniform Domain Name Dispute Resolution Policy Administrative Procedure (“Procedure”) in 1999. Through the Procedure, anyone can make a complaint, requesting to have a domain name that is confusingly similar to a complainant’s trademark either cancelled or more often, transferred to the complainant’s control. A large body of cases has been reported under the Procedure.

An early but instructive example is Wal-Mart Stores, Inc. v Richard MacLeod, in which Mr. MacLeod of Toronto had registered ‘wal-martsucks.com’ and wanted half a million dollars from Wal-Mart for control of the domain name. Mr. MacLeod didn’t host any content at the disputed domain, but there are many other examples of confusingly similar domain names leading customers to illegal content, such as websites selling counterfeit goods or pushing violent images and speech.

A successful complaint requires clear and concise evidence of three elements:

1. The domain name is confusingly similar to a complainant’s trademark;
2. The respondent has no legitimate rights in the domain name; and
3. The domain name had been registered in bad faith.

In the Wal-Mart example, elements (2) and (3) were met as Mr. MacLeod was effectively holding the domain name hostage, and element (1) was met as the domain name was found to be confusingly similar to Wal-Mart trademarks. In meeting all three elements, Wal-Mart successfully had the domain name ‘wal-martsucks.com’ transferred to its control.

While the Procedure deals with the most popular domains (.com, .org, .net), there is an analogous procedure available specifically for domain names with ‘.ca’.

A successful complaint can be cost- and time-effective

With respect to element (1), a complainant may rely on registered trademark rights or show use of an unregistered mark in association with goods and services to establish common law rights. Businesses that sell online usually have electronic copies of marketing materials and invoices showing sufficient information to establish common law rights in the mark for the purposes of the Procedure. This is especially important for smaller businesses that may not have resources to register their trademark rights and do not have a large budget to put towards evidence collection.

The complaint is submitted entirely electronically to WIPO and a decision is usually rendered by a panelist, an individual chosen by WIPO who possesses relevant skills and experience, within a few months. It generally costs a couple of thousand dollars in fees to submit the complaint, which is often done with the assistance of a trademark lawyer. Especially compared to court proceedings, the Procedure stands as a cost-effective and practical way to fight domain name abuse.

This client update is provided for general information only and does not constitute legal advice. If you have any questions about the above, please contact a member of our Intellectual Property group.

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