When Cybersquatting & Trademarks Collide

So what happens when your business name becomes someone else’s domain name? What happens when a layman registers www.mcdonalds.com before the billion burger server commonly known as “McDonald’s” does? What about when Hasbro and an adult entertainment website both desire the rights to www.candyland.com, but the adult site beats Hasbro to the proverbial punch or; when an MTV Video Jockey purchases www.mtv.com, but then leaves MTV? What happens?

For a time, these amounted to little more than good questions. It was clear that intellectual property rights were in question, being jeopardized and/or infringed upon, but the courts had not yet faced these new age digital era issues. Naturally, litigation ensued; actually, it boomed! Consequently, it also became increasingly obvious that with more than 3,000,000 registered trademarks and service marks; more than 33,000,000 internet domain names having been registered and; with the advent of phraseology like, “cybersquatting” and “typosquatting,” these issues were not going to quickly dissipate on their own. Subsequently, a coalition of internet business, technical, academic and user communities joined forces to find a means of resolution; resolution that would be short of a future bursting at the seams with litigation.

In October 1998, the Internet Corporation for Assigned Names and Numbers (ICANN) was developed and, amongst other things, this private-sector nonprofit organization became responsible for the management and coordination of the internet domain name system (DNS). As part of its policy, ICANN enacted the Uniform Domain Name Dispute Resolution Policy (UDRP) to provide a mechanism for trademark owners to recover domain names from cybersquatters. Moreover, all domain name registrars having the authority to grant top-level domains (i.e., .com, .net, etc.) would now be required to follow the UDRP which included a streamlined “cyber arbitration” procedure to more quickly and less expensively resolve domain name ownership disputes involving trademarks.

In order to win a UDRP arbitration, the trademark owner/complainant must prove each of the following elements:

1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2. The domain name owner does not have any rights or legitimate interests in respect of the domain name; and
3. The domain name owner registered the domain name and is using it in “bad faith”.

If the trademark owner is successful in proving these elements, an award is granted whereby the registrar of the domain name is instructed to cancel, transfer or otherwise make changes to the domain name registration.

In light of the examples questioned above:

1. Candyland.com is now safely in the hands of Hasbro;
2. McDonald’s made a charitable contribution at the domain holder’s request to transfer the domain name; and
3. MTV settled out of court with Video Jockey, Adam Curry.


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