Domain names are a critical digital asset for many businesses and serve as a key component of their intellectual property (IP) strategies. However, protecting these rights involves navigating different legal and procedural frameworks, including mechanisms like the WIPO UDRP, as noted by Volha Parfenchyk.
When domain names reflect or include elements of a company’s trademark, they help customers recognize and trust the official digital presence of the brand, especially in online retail. This use strengthens consumer confidence in the brand and its offerings.
As a result, many businesses aim to secure domain names that fully or partially include their registered trademarks. But often, they discover that the domain name they want has already been claimed by another party.
When Does Domain Name Use Become Infringement?
Owning a domain name that contains a company’s brand name or trademark does not automatically constitute infringement, since domain names are typically assigned on a “first-come, first-served” basis. This allows someone who registered the name earlier — even in a different market or for unrelated products or services — to lawfully hold it.
However, conflicts arise when domain names are registered in bad faith or misused. This includes practices like cybersquatting, domain parking, creating imitation websites, or other activities that violate trademark rights or deceive consumers.
Challenging Domain Name Ownership
If a trademark owner suspects that a domain name has been improperly registered by someone else, there are legal steps they can take. One of the most recognized and widely used processes to resolve such conflicts is the Uniform Domain Name Dispute Resolution Policy (UDRP), overseen by the World Intellectual Property Organization’s (WIPO) Arbitration and Mediation Center.
Resolving Disputes Through the WIPO UDRP
The UDRP is designed to address disputes—often across borders—between those who register domain names and trademark owners. Its key advantage is efficiency: cases typically conclude within two months, making it much faster and more cost-effective than traditional litigation through national courts.
This process is applicable when a trademark holder believes a domain name has been registered in bad faith. A challenge under the UDRP can be made if the following conditions are met:
a) The domain name is either identical or confusingly similar to the trademark in question;
b) The current domain holder lacks legitimate rights or interests in the domain;
c) The domain name was registered and is being used with malicious intent.
Under the UDRP, “bad faith” might include registering a domain solely to pressure the trademark owner into purchasing it (known as cybersquatting). It also covers cases where the registrant seeks to exploit the reputation of a well-known brand by registering similar domain names to deceive users (a practice similar to passing off). Additionally, if a registrant obtains a domain to interfere with the trademark holder’s business—such as through domain parking—this can also be interpreted as bad faith.
The World Intellectual Property Organization (WIPO) offers a structured process for resolving disputes over domain name registrations through its Uniform Domain Name Dispute Resolution Policy (UDRP). This mechanism addresses conflicts involving both generic top-level domains (gTLDs) and certain country code top-level domains (ccTLDs).
Eligible Domain Names Under the UDRP
The UDRP is applicable to domain names registered under gTLDs such as .com, .net, .org, and .biz. Additionally, numerous ccTLDs have adopted the UDRP or similar dispute resolution policies. For example, domains like .NL (Netherlands), .FR (France), and .CH (Switzerland) fall under this category. The United Kingdom’s .uk domain is governed by the Dispute Resolution Service (DRS) Policy administered by Nominet. [1]
Adjudication Process
Disputes under the UDRP are resolved by a panel convened by the WIPO Arbitration and Mediation Center. This panel comprises one or three independent experts in domain name law. The number of panelists is determined based on the preferences of the parties involved. While the WIPO Center selects the panelists, it considers the parties’ preferences in the selection process.
The fees associated with the UDRP process vary depending on the number of domain names involved and the number of panelists appointed. Detailed fee structures are available on WIPO’s official website.
Potential Outcomes
Upon reviewing a case, the UDRP panel may decide in favor of the complainant (typically the trademark owner) and order the transfer or cancellation of the disputed domain name. Alternatively, the panel may rule in favor of the current domain name registrant, allowing them to retain the domain.
If either party is dissatisfied with the panel’s decision, they have the option to escalate the matter to a national court with appropriate jurisdiction. It’s also permissible to initiate legal proceedings in national courts prior to or instead of engaging in the UDRP process.
For those seeking to understand the nuances of domain name disputes and the UDRP process, WIPO provides comprehensive resources and guidance through its official channels.
