InterNetX posted an interview with Charlotte Spencer, Senior Legal Officer in the Internet Dispute Resolution Section at WIPO. Safe to say Charlotte knows just about everything when it comes to domain disputes.
For newer domain investors who sometimes seem lost by the UDRP process the interview is a solid primer on learning about the process and what to not do when it comes to domain registrations.
From the article:
What are the main criteria outlined in the UDRP that determine whether a domain name infringes upon a trademark owner’s rights?
To successfully argue a UDRP complaint, three essential and cumulative criteria must be met. Let’s break them down:
- Trademark ownership and similarity
The complainant must first demonstrate their rights in a trademark, and establish that the disputed domain name is either identical or “confusingly similar” to that trademark. While having a registered trademark can make this step more straightforward, it’s important to note that registration is not mandatory. With appropriate evidence, unregistered trademarks may form the basis of a UDRP complaint, provided the complainant can prove that the unregistered trademark has gained distinctiveness through consistent use in commerce. For cases involving unregistered marks, specific evidence—such as documented use and recognition in the market—should be presented to support the claim.
- Lack of rights or legitimate interests
Next, the complainant must demonstrate that the registrant does not have legitimate rights or interests in the domain name. This means showing that the registrant isn’t using the domain name in connection with legitimate business activities, isn’t commonly known by the domain name, and isn’t making fair or non-commercial use of the domain name. Essentially, the respondent should have no reasonable claim that justifies their possession of the domain.
- Registration and use in bad faith
The third and, sometimes most challenging criterion is proving that the domain name was both registered and is being used in bad faith. This involves showing intent to exploit the domain name at the expense of the trademark owner. Examples of bad faith include attempting to sell the domain name to the trademark owner for an inflated price, redirecting users to competing services, or using the domain to mislead or harm the reputation of the trademark owner. This dual requirement—bad faith in both registration and usage—often presents the most complicated hurdle for complainants, as clear evidence is essential.
You can read the full interview on the InterNetX blog.