By Rachel Buker
Rachel is an attorney at Harris & Moure whose practice focuses mostly on intellectual property.
Trademark infringement with respect to domain names is a very common problem, particularly for those who do business with China or even just manufacture their product there. It is unsurprising that many in China are quick to register domain names similar to those of the foreign companies they see.
We frequently see the following sorts of domain name thefts, oftentimes by Chinese companies seeking to hone in on a well-known brand name:
- Domain names that intentionally contain a common typo of a known trademark.
- Domain names that take a known trademark and attach a generic word like “outlet” or a word descriptive of the product, such as “shoes.”
- Domain names that are exactly the same as a known trademark’s domain name, but with a different extension. For example, abc.net, instead of abc.com.
Companies confronted with domain name theft oftentimes do not realize how relatively easy it can be to put a stop to it, even when it is a Chinese company that is using the name. The Internet Corporation for Assigned Names and Numbers (“ICANN”) developed The Uniform Domain Name Resolution Policy (“UDRP”) to resolve domain name disputes, and international arbitration of disputes under UDRP is administered by a list of ICANN approved dispute resolution service providers.
Anyone who registers a domain name is agreeing to the registrar’s terms and conditions, including making a commitment to be bound by the UDRP. The UDRP’s purpose is to prevent cybersquatting, which is defined “as registering, trafficking in, or using, a domain name with bad faith intent to profit from the goodwill of atrademark belonging to someone else.” Tenneco Automotive Operating Company Inc. v. Naushad Dhukka / SoftDot Technologies, LLC,NAF, FA1104001384326 (May 31, 2011).
When a complainant demonstrates that another party is using a domain name in “bad faith,” the UDRP will either transfer or cancel the offending domain name at the request of the complainant. We almost always recommend that the domain name be transferred to our clients so nobody else can grab it at some later date and force our client to go through the same UDRP domain name arbitration again.
Companies need to be proactive in locating and excising “bad faith” websites as soon as they are discovered because those offending sites can not only damage a company’s online presence, they infringe upon and can ultimately dilute legitimate trademark rights.