ALTERNATIVE TO LITIGATION IN DOMAIN NAME DISPUTES
- AuthorPalmer IP
- Date 5 June 2015
In today’s business environment, a Corporation’s brand is a vital part of its business. Counterfeiters, cyber-squatters and competitors often attempt to capitalize on a Corporation’s brand by registering domain names that are similar or the same as a Corporation’s trademark. A Corporation’s natural response is to send cease and desist letters and then begin costly litigation proceedings alleging trademark infringement.
An alternative to litigation is to file a Uniform Domain Name Dispute Resolution (“UDRP”) complaint with the World Intellectual Property Office (“WIPO”). The UDRP process is designed to be much simpler and quicker as decisions are rendered generally within 60 days of filing a complaint . Another major advantage is that the UDRP process and the WIPO have international scope meaning no matter where the registrar or the domain name holder is located, the WIPO has jurisdiction to resolve the domain name dispute.
To succeed in a UDRP complaint, the Corporation must meet the following three criteria:
(i) the domain name is identical or confusingly similar to a trademark or service mark in which the Corporation has rights; and
(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.
If you would like to learn more about the UDRP process or discuss the likelihood of success in your case, please do not hesitate to contact us by telephone at 604-677-7727 or by email at info[at]palmerip.com.
By: Sampson Pun