February 04, 2011
Trade Mark Owners can sometimes find that their registered or unregistered trademark is being used by another business as its domain name. This can occur quite often as domain names are allocated by a domain name registrar on a first come first serve basis, without notifying the owners of similar domain names or trade marks.
To deal with this problem, the Uniform Domain Name Dispute Resolution Policy (UDRP) was established to allow anyone to lodge a complaint against the registration of a domain name, which is identical or confusingly similar to a trade mark owned by them.
The procedure offers a method of settling disputes without recourse to the courts, however, its effectiveness is not always guaranteed, particularly because of the following reasons:
To succeed in preventing someone from using a domain name similar to the applicant’s trade mark, the applicant has to prove that the other party has no legitimate rights in the name. However, the procedures do not contain any discovery or cross examination powers to allow the applicant to gather the necessary information. So proving that the other party has no rights in the name can be more difficult than it would be in a court action. Also, a UDRP complaint is not kept confidential and there is no right to damages, costs or injunctions to prevent use of the domain name pending the decision.
It is therefore to be hoped that the Generic Names Support Organisation, which is responsible for developing policy for the domain name system, succeeds in passing a motion due in February to conduct a review of the procedure and that any subsequent reforms take into account the issues above.
Anyone concerned about their trade mark and/or domain name rights should obtain legal advice to ascertain the best way to obtain protection.
