A service of Stephen W. Workman P.C

Domain Disputes

Mr. Workman is a recognized expert in the law of domain name disputes and domain name recovery.  He handles domain name disputes for clients located throughout the United States, including Chicago, Phoenix, Los Angeles, Miami, as well as for clients based in Canada and in Europe.

Domain name disputes can arise in various ways.  During the 1990’s, unscrupulous persons raced to register famous company names and brand names before the rightful corporate owner did so.  For example, an individual visits the supermarket and makes a list of a dozen or so well-known product brand names.  He then registers these brand names in the form of domain names, e.g., “huggies.com.”  He then notifies the companies that manufactures the products, such as Huggies, and informs the companies he is willing to transfer the domain names in exchange for various sums of money.  This activity became known as “cybersquatting;” the taking of property existing in cyberspace and “sitting” or “squatting” on it until the rightful corporate owner paid a sizeable sum to the “squatter” for the return of the domain.

As a result of this all too common practice, Congress amended the Lanham Act (the federal unfair competition and trademark statute) to specifically outlaw cybersquatting.  
Another common domain name dispute scenario is when a person registers a domain name that is confusingly similar in sound or spelling to a well-known product or company name, in the hopes of reaping “typo” type-in traffic.  This is unlawful under both the Lanham Act and under the ICANN Uniform Domain Dispute Resolution Policy, discussed below.

If you believe that another person or entity has registered a domain name that you believe should belong to you, you have the option of filing a lawsuit in court or filing an administrative action under the ICANN policy.  Given that litigation, if contested by the other party, can be extremely expensive, Mr. Workman advises his clients to file an ICANN administrative action to compel the transfer of a domain name improperly registered to another person or entity.

ICANN (the International Corporation for Assigned Names and Numbers) is the non-profit organization responsible for assigning domain names.  ICANN has a protocol for the filing of an administrative action with one of the approved providers (such as WIPO or NAF). The protocol is set forth in the Uniform Dispute Resolution Proceeding (UDRP).  The provider will also have its own set of Supplemental Rules.

The basis of domain name disputes is most often that the domain is confusingly similar, or even identical, to a trademark or service mark such that consumer confusion has or will result.  More specifically, to prevail under UDRP, the complaining party much demonstrate the presence of three facts: 1) the domain name is confusingly similar or identical to a product, service or company name used by the complaining party; 2) the party who registered the domain name at issue has no legitimate rights in the name; and 3) the party who registered the domain is using it in bad faith.

In October 2009, just months after becoming autonomous from the U.S. government, ICANN announced plans to expand domain names beyond the alphanumeric characters of the English language, such that characters of other languages would be permitted to identify a domain’s IP address.

While this “internationalization” of domain names is no doubt welcomed by Internet users who cannot read the English language, it may cause an explosion of domain name disputes, as a trademark or service mark written in a language other than English, and serving as a domain name by an unrelated person or entity, could easily cause confusion as to the origin, source, affiliation or sponsorship of the web site residing on that non-English language domain name.
Mr. Workman has successfully handled dozens of domain name disputes under the ICANN rules, before both WIPO and NAF.