Selling your domain name requires a strong understanding of UDRP, or the Uniform Domain Name Dispute Resolution Policy. The last thing you want to do as a domain owner is risk infringing on another company or individual’s trademark or intellectual property. As a result, knowing about the UDRP process ahead of time can save you from the expense, hassle and legal consequences of falling into a potentially problematic domain name dispute later down the line. Read on to find out more about what UDRP is, how you might be unknowingly breaking the rules and what the outcomes mean for domain owners.
What is UDRP?
The Uniform Domain Name Dispute Resolution Policy first came about when ICANN (the organization that handles the Internet’s domain name system) was established. One of their earliest tasks was figuring out a way to resolve disputes regarding the use of trademarks in domain names, without the owner of that trademark’s consent.
Simply put, you’re probably reading this because you fall into one of two camps:
- Either you own a domain name that you’re concerned is closely related to somebody else’s trademark
- Or, you yourself hold a trademark and you wonder if somebody else is infringing upon your mark through ownership of a related domain name
In either case, problems usually arise when a trademark owner (the claimant) wants an unaffiliated individual (the respondent) to stop using the domain that resembles their trademark. So the claimant will file a claim against the respondent to any of the ICANN-approved dispute resolution service providers, who will then enact the UDRP process.
The UDRP Guidelines
For a UDRP case to be successful, the following three criteria must be met:
- The domain name in question must be identical or confusingly similar to a trademark or service mark in which the complainant has rights.
- The respondent must have no legitimate interests in respect of the domain name.
- The domain name must have been registered and used in bad faith.
Even if you think you’re not doing any of the above – you might be without even realizing it.
For example, reaching out to a potential business about buying a domain you hold could be seen as an act of bad faith, especially if they’re the only buyer you’re contacting about the domain.
Alternatively, you could argue that you have registered a domain name but don’t have a website set up behind it so it isn’t being used in bad faith. But, under UDRP rules, even owning a domain name with intent to sell it in excess of the price purchased can be enough to constitute using such domain in bad faith.
How to Avoid UDRP Pitfalls
The first thing you must do if you have any shred of doubt about a domain name or trademark you own is reach out to an experienced domain attorney who can give you proper legal advice and guidance.
One such lawyer is John Berryhill, who advises thorough research to avoid even buying a potentially contestable domain in the first place. The first thing you should do is check if a trademark matching a domain has been registered before you purchase it. In some countries like the US, Canada and Australia, a trademark doesn’t even have to be registered – it can still acquire similar rights through business use. So, conduct a thorough Google search to make sure that there isn’t a single company dominating the search engine results. You can also look up the name on OpenCorporates. A word of warning here – UDRP applies to all domain extensions, not just .COM. So make sure your search extends across a range of TLDs.
When you’re using outbound marketing tactics to actively sell a domain name, also be sure to reach out to a wide variety of potential buyers and be sure to let them know that they are one of many you are contacting about the sale of the domain name. This will avoid individuals from thinking they’re being uniquely targeted, and also generate a greater level of interest and demand for the name.
The Dispute Process
When disputes do occur, proceedings will be carried out in accordance with the UDRP alongside any supplemental rules set forth by the service provider. The process will be quicker, less expensive and more informal than traditional litigation. Another big benefit of UDRP is the fact that it’s global – it’s a single resolution process that can be used internationally, meaning a dispute can be resolved regardless of where the registrar, complainant or respondent are located.
If a UDRP claim is successful, the domain will be transferred over to the claimant. But outcomes of a UDRP aren’t always final – if a complainant loses the proceeding, they can still bring a lawsuit against the person or company who registered the domain name under local law, such as the Anti-Cybersquatting Consumer Protection Act, which would allow a US court of law to overturn a UDRP panel’s decision if needed. If an individual who has registered a domain name loses the rights to that name under a UDRP ruling, all is not lost for them, either. They can file a lawsuit against the trademark holder within ten business days, to prevent the registrar from transferring the domain name in the relevant jurisdiction (usually the registrant’s location).
Always Here to Help
As global domain name experts at Brannans, we have extensive experience in helping name companies and so can help you avoid buying a name that might contravene the UDRP regulations. We can also take over the sales process of a domain you wish to sell in a compliant and effective way.
Contact us today if you would like to find out more and discuss your options – nobody will work harder for you.
