What should you do if someone is using your trademark in a domain name?
Domain name owners should know their rights under the Uniform Domain Name Dispute Resolution Policy. Under the UDRP, a trademark owner can initiate a dispute to challenge the registration of an existing domain name. This is exactly what we did when we found out about doteasyserver.com.
Our administrators were doing their routine industry updates when we stumbled upon a familiar, yet unknown domain name – doteasyserver.com. Curious, we began our investigation. And as we expected, someone had registered that domain name without our authorization.
So, we filed a dispute for that domain name through one of the ICANN-approved dispute resolution service providers, the World Intellectual Property Organization. After the administrative proceedings, it was decided that the doteasyserver.com domain name was to be transferred to us.
How do I file a dispute?
First of all, you will need to familiarize yourself with the UDRP. This is so that you know what you need to prove in order to claim rights to the domain name you are challenging.
Second, you will need to choose a dispute resolution service provider and familiarize yourself with their procedures and supplemental rules. Each provider will have slight differences in their supplemental rules, and the fees that each one charges are also different.
A list of the ICANN-approved dispute resolution service providers is listed on ICANN’s web site.
What can be done?
We wanted to share this story because we do not wish to see any of our members go through the same process. It is both cost and time consuming. Regardless of the outcome, the damage has already been done and our “Doteasy” mark has been used in bad faith.
There is really no absolute way to prevent someone from registering a domain name that infringes the trademark of a third party. Although the UDRP does specify that any domain registration should not infringe on the trademark rights of a third party, people ignore that and register for the infringing domain names anyway.
The only real preventative measure is to register for those domain names first before anyone else does. By registering for variants of your company or trademarked name, you give less opportunity for other people to take those domain names. This is definitely more time and cost efficient than going through a domain dispute with the UDRP.