Canada: How To Use UDRP Proceedings To Fight Cybersquatting And Cyberpiracy!

This Month's Entry Focuses On A Second Way To Protect Your Brand From Cybersquatting And Cyberpiracy Which Is By Way Of UPRP Proceedings.

The Uniform Domain Name Dispute Resolution Policy (UDRP) Was Approved And Adopted On October 24, 1999 Based On A Report Prepared By The World Intellectual Property Organization (WIPO).

The UDRP Policy Is Incorporated By Reference Into Domain Name Registration Agreements And Sets Out The Terms And Conditions Applicable To A Dispute Between The Registrant And A Third Party Relating To The Registration And Use Of A Domain Name. The UDRP Has Been Adopted By All Accredited Registrars For Domains Ending In .Biz, .Com, .Edu, .Info, .Name .Net, And .Org, Among Others. It Has Also Been Adopted For Many Cctlds And The New Gtlds.

A Registrant Must Submit To A Mandatory Administrative Proceeding If A Complainant Asserts That:

• The Domain Name Is Identical Or Confusingly Similar To A Trademark Or Service Mark In Which The Complainant Has Rights;
• The Registrant Has No Rights Or Legitimate Interest In The Domain Name; And
• The Domain Name Has Been Registered And Is Being Used In Bad Faith.

The Complainant Selects The Arbitrator From Among Those Approved By ICANN By Submitting The Complaint To A Specific Service Provider. The Service Provider Maintains A Publicly Available List Of Panelists And Selects The Individual Panelist Who Will Hear The Arbitration Unless A Party Elects To Have A Three-Member Panel. All Fees Charged By The Service Provider Are The Responsibility Of The Complainant Unless The Registrant Expands The Number Of Arbitrators From One To Three, In Which Case The Fees Will Be Split Evenly.

The Complainant Must Prove Each Of The Above Elements Are Present By Filing Evidence To Substantiate Them.

In UDRP Cases, The Panelists Apply The Policy Criteria, And It Is Unnecessary To Make Out A Case Of Trademark Infringement. Adding Nondistinctive Elements Such As "E" To Designate "Electronic" Will Receive Little Weight. Website Content Is Irrelevant In Determining Whether The Domain Name Is "Confusingly Similar".

Generally, Panelists Require A Complainant To Make Out An Initial Prima Facie Case That The Respondent Lacks Rights Or Legitimate Interest. Once This Is Done,The Burden Shifts To The Respondent To Show Rights Or Legitimate Interest.

Using A Domain Name That Is A Misspelling Of The Complainant's Trademark To Divert Traffic To A Competitive Website Is Not A Legitimate Interest. A Pattern Of Other Infringing Activity Shows A Lack Of Legitimate Interest And Bad Faith.

In Such Proceedings, These Circumstances, If Found To Be Present, Are Evidence Of Registration And Use Of A Domain Name In Bad Faith:

• The Registrant Has Registered Or Acquired The Domain Name Primarily For The Purpose Of Selling, Renting, Or Otherwise Transferring The Domain Name Registration To The Complainant, Who Is The Owner Of The Trademark Or Service Mark Or To A Competitor Of That Complainant, For Valuable Consideration In Excess Of Documented Out-Of-Pocket Costs Directly Related To The Domain Name; Or
• The Registrant Has Registered The Domain Name In Order To Prevent The Owner Of The Trademark Or Service Mark From Reflecting The Mark In A Corresponding Domain Name, Provided That The Registrant Has Engaged In A Pattern Of Such Conduct; Or
• The Registrant Has Registered The Domain Name Primarily For The Purpose Of Disrupting The Business Of A Competitor; Or
• By Using The Domain Name, The Registrant Has Intentionally Attempted To Attract, For Commercial Gain, Internet Users To Its Website Or Other Online Location, By Creating A Likelihood Of Confusion With The Complainant's Mark As To The Source, Sponsorship, Affiliation, Or Endorsement Of The Registrant's Website Or Location Or Of A Product Or Service On The Registrant's Website Or Location.

Generally, When A Domain Name Is Registered Before Trademark Rights Are Established, The Registration Of A Domain Name Will Not Be Found To Be In Bad Faith Because The Registrant Could Not Have Contemplated The Complainant's Non-Existent Rights.

The UDRP Was Intended To Apply To The Most Direct And Obvious Forms Of Abusive Registration, Leaving More Difficult Cases To The Courts. The Summary Nature Of The Proceedings Is Not Intended To Resolve Complicated Factual Issues Or Matters Of Credibility. However, The Application Of The Policy Has Been Broadened As UDRP Decisions Have Expanded The Definition Of Bad Faith Through Precedent. First, It Has Been Widely Accepted That Passive Holding Of A Domain Name Constitutes Bad Faith Use. Second, False Or Inaccurate Contact Information May Be Accepted As Evidence Of Bad Faith. Finally, Some Cases Have Found That Anyone Who Knowingly Registers A Name That Is Identical Or Similar To A Trademark Is, By That Fact Alone, Guilty Of Bad Faith Registration And Use.

The Remedies Available Are Limited To Requiring The Cancellation Of The Registration Or Transferring The Registration To The Complainant. Transfer Is By Far The Most Common Remedy. If Damages Or An Injunction Are Important, An Action Must Be Brought In The Courts. The Existence Of The Proceedings Prevents Neither The Registrant Nor The Complainant From Submitting The Dispute To A Court Of Competent Jurisdiction Either Before Or After The Mandatory Administrative Proceeding Is Initiated.

The Purpose Of The UDRP And The UDRP Rules Is To Provide A Fast, Inexpensive, And Internet-Friendly Alternative To Court Litigation But It Is Not A Substitute For Such Litigation.&Nbsp; UDRP And The UDRP Rules Ensure That A Party May Litigate A Dispute Even If A Mandatory Proceeding Has Been Commenced.

If It Is Decided The Domain Name Should Be Cancelled Or Transferred, The Registrant Is Given 10 Business Days Before The Decision Is Implemented To Start Legal Proceedings Against The Complainant. Such Proceedings Must Be Instituted Either In The Jurisdiction The Registrar Is Located, Provided That The Registrant Contractually Submitted To Jurisdiction There, Or The Location Of The Registrant As Shown In The Registrar's WHOIS Database.

While Most Arbitrations Are Not Precedent Based, UDRP Decisions Typically Refer To Other UDRP Decisions. Panels Consider It Desirable That Their Decisions Be Consistent With Prior Panel Decisions Dealing With Similar Fact Situations. However, This Can Create Difficulties As There Is No Statutory Right To Appeal And There Are A Multitude Of Decisions.

This Month's Entry Focuses On A Second Way To Protect Your Brand From Cybersquatting And Cyberpiracy Which Is By Way Of UPRP Proceedings.

The Uniform Domain Name Dispute Resolution Policy (UDRP) Was Approved And Adopted On October 24, 1999 Based On A Report Prepared By The World Intellectual Property Organization (WIPO).

The UDRP Policy Is Incorporated By Reference Into Domain Name Registration Agreements And Sets Out The Terms And Conditions Applicable To A Dispute Between The Registrant And A Third Party Relating To The Registration And Use Of A Domain Name. The UDRP Has Been Adopted By All Accredited Registrars For Domains Ending In .Biz, .Com, .Edu, .Info, .Name .Net, And .Org, Among Others. It Has Also Been Adopted For Many Cctlds And The New Gtlds.

A Registrant Must Submit To A Mandatory Administrative Proceeding If A Complainant Asserts That:

• The Domain Name Is Identical Or Confusingly Similar To A Trademark Or Service Mark In Which The Complainant Has Rights;
• The Registrant Has No Rights Or Legitimate Interest In The Domain Name; And
• The Domain Name Has Been Registered And Is Being Used In Bad Faith.

The Complainant Selects The Arbitrator From Among Those Approved By ICANN By Submitting The Complaint To A Specific Service Provider. The Service Provider Maintains A Publicly Available List Of Panelists And Selects The Individual Panelist Who Will Hear The Arbitration Unless A Party Elects To Have A Three-Member Panel. All Fees Charged By The Service Provider Are The Responsibility Of The Complainant Unless The Registrant Expands The Number Of Arbitrators From One To Three, In Which Case The Fees Will Be Split Evenly.

The Complainant Must Prove Each Of The Above Elements Are Present By Filing Evidence To Substantiate Them.

In UDRP Cases, The Panelists Apply The Policy Criteria, And It Is Unnecessary To Make Out A Case Of Trademark Infringement. Adding Nondistinctive Elements Such As "E" To Designate "Electronic" Will Receive Little Weight. Website Content Is Irrelevant In Determining Whether The Domain Name Is "Confusingly Similar".

Generally, Panelists Require A Complainant To Make Out An Initial Prima Facie Case That The Respondent Lacks Rights Or Legitimate Interest. Once This Is Done,The Burden Shifts To The Respondent To Show Rights Or Legitimate Interest.

Using A Domain Name That Is A Misspelling Of The Complainant's Trademark To Divert Traffic To A Competitive Website Is Not A Legitimate Interest. A Pattern Of Other Infringing Activity Shows A Lack Of Legitimate Interest And Bad Faith.

In Such Proceedings, These Circumstances, If Found To Be Present, Are Evidence Of Registration And Use Of A Domain Name In Bad Faith:

• The Registrant Has Registered Or Acquired The Domain Name Primarily For The Purpose Of Selling, Renting, Or Otherwise Transferring The Domain Name Registration To The Complainant, Who Is The Owner Of The Trademark Or Service Mark Or To A Competitor Of That Complainant, For Valuable Consideration In Excess Of Documented Out-Of-Pocket Costs Directly Related To The Domain Name; Or
• The Registrant Has Registered The Domain Name In Order To Prevent The Owner Of The Trademark Or Service Mark From Reflecting The Mark In A Corresponding Domain Name, Provided That The Registrant Has Engaged In A Pattern Of Such Conduct; Or
• The Registrant Has Registered The Domain Name Primarily For The Purpose Of Disrupting The Business Of A Competitor; Or
• By Using The Domain Name, The Registrant Has Intentionally Attempted To Attract, For Commercial Gain, Internet Users To Its Website Or Other Online Location, By Creating A Likelihood Of Confusion With The Complainant's Mark As To The Source, Sponsorship, Affiliation, Or Endorsement Of The Registrant's Website Or Location Or Of A Product Or Service On The Registrant's Website Or Location.

Generally, When A Domain Name Is Registered Before Trademark Rights Are Established, The Registration Of A Domain Name Will Not Be Found To Be In Bad Faith Because The Registrant Could Not Have Contemplated The Complainant's Non-Existent Rights.

The UDRP Was Intended To Apply To The Most Direct And Obvious Forms Of Abusive Registration, Leaving More Difficult Cases To The Courts. The Summary Nature Of The Proceedings Is Not Intended To Resolve Complicated Factual Issues Or Matters Of Credibility. However, The Application Of The Policy Has Been Broadened As UDRP Decisions Have Expanded The Definition Of Bad Faith Through Precedent. First, It Has Been Widely Accepted That Passive Holding Of A Domain Name Constitutes Bad Faith Use. Second, False Or Inaccurate Contact Information May Be Accepted As Evidence Of Bad Faith. Finally, Some Cases Have Found That Anyone Who Knowingly Registers A Name That Is Identical Or Similar To A Trademark Is, By That Fact Alone, Guilty Of Bad Faith Registration And Use.

The Remedies Available Are Limited To Requiring The Cancellation Of The Registration Or Transferring The Registration To The Complainant. Transfer Is By Far The Most Common Remedy. If Damages Or An Injunction Are Important, An Action Must Be Brought In The Courts. The Existence Of The Proceedings Prevents Neither The Registrant Nor The Complainant From Submitting The Dispute To A Court Of Competent Jurisdiction Either Before Or After The Mandatory Administrative Proceeding Is Initiated.

The Purpose Of The UDRP And The UDRP Rules Is To Provide A Fast, Inexpensive, And Internet-Friendly Alternative To Court Litigation But It Is Not A Substitute For Such Litigation.&Nbsp; UDRP And The UDRP Rules Ensure That A Party May Litigate A Dispute Even If A Mandatory Proceeding Has Been Commenced.

If It Is Decided The Domain Name Should Be Cancelled Or Transferred, The Registrant Is Given 10 Business Days Before The Decision Is Implemented To Start Legal Proceedings Against The Complainant. Such Proceedings Must Be Instituted Either In The Jurisdiction The Registrar Is Located, Provided That The Registrant Contractually Submitted To Jurisdiction There, Or The Location Of The Registrant As Shown In The Registrar's WHOIS Database.

While Most Arbitrations Are Not Precedent Based, UDRP Decisions Typically Refer To Other UDRP Decisions. Panels Consider It Desirable That Their Decisions Be Consistent With Prior Panel Decisions Dealing With Similar Fact Situations. However, This Can Create Difficulties As There Is No Statutory Right To Appeal And There Are A Multitude Of Decisions.

Originally Published by GSNH, November 2020

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.