A strategy for enforcement

Many businesses faced with the violation of a domain right automatically resort to the UDRP or an equivalent. However, there are often more cost-effective methods of resolving domain name issues, as CPA Global’s Samantha Frida explains

Although domain name Dispute Resolution Policies (DRPs) are almost globally recognised as trustworthy solutions to domain name disputes, the process can be costly and complicated to arrange, and doesn’t necessarily guarantee success. Large businesses seeking to resolve infringement with minimum effort may have deep enough pockets to resort immediately to DRPs, but for small businesses looking to minimise their expenditure, they are not necessarily the first and only option. After all, domain name disputes can often be resolved by simply sending a cease and desist letter to the infringing party. Domain name owners should therefore consider the following steps before embarking on the DRP process:

STEP 1: Investigate
In order to fight infringement, it’s imperative for a company to track its brands online and record any history of violation. Monitoring domain name registrations across all generic Top-level Domains (gTLDs) and available country-code Top-level Domains (ccTLDs) will allow you to highlight any registrations that are identical or confusingly similar to your trademark-protected brands and services, providing you with the information needed to pursue infringement action quickly and effectively. Building an in-depth report about the registrant will also help inform and support your retrieval strategy.

STEP 2: Cease and desist
Issuing a cease and desist letter is important for two reasons. Firstly, it provides the alleged infringer with the opportunity to back down without unnecessary work and expense. If the infringing company has mistakenly registered the name or is appropriately scared by the threat of litigation, it will often return the rights on receipt of the letter. Secondly, if the company registered the name in bad faith, it will often demand a hefty fee for its return. Such a response indicates that the registration was made in bad faith and will support your claim should you be forced to pursue the infringer to the DRP stage.

Monitoring domain name registrations across all generic Top-level Domains (gTLDs) and available country-code Top-level Domains (ccTLDs) will allow you to highlight any registrations that are identical or confusingly similar to your trademark-protected brands

STEP 3: Attempt recovery
Of course, cease and desist letters don’t always provoke a timely response; however, before spending the $5,000 involved in the DRP process, companies should first consider organising an anonymous recovery instead. In such attempts at recovery, companies such as CPA, will ‘anonymously’ approach the registrant on your behalf and negotiate a fee for the return of the URL. This route guarantees the return of the domain name and is particularly useful for companies who don’t yet have trademark rights in place to support their claims for ownership in the DRP process.

STEP 4: Use a DRP
If the dispute is still unresolved, DRPs provide the final opportunity to retrieve the name in the territories where such processes exist. However, DRPs require you to prove (a) that the domain name is similar or confusingly similar to your trademark, (b) that the registrant has no affiliation to the name and therefore no right to register it, and (c) that the registration was made in bad faith. This final requirement is often difficult to prove, which is where tools, such as domain name watching and registrant investigation come into play. Monitoring and checking the registrant’s background can often unearth the evidence needed to prove that they have a history of bad faith. Ultimately, however, the best way to resolve a dispute is to avoid it in the first place. Those with a proactive approach to registering domains benefit from the best chance of protecting their valuable brands from infringement. However, to do this successfully, brand owners need to be aware of restrictions on domain name registrations and to keep on top of rule changes in the countries where they register their brands.

Which DRP should I use?
ICANN’s Uniform Domain-Name Dispute-Resolution Policy (UDRP) protects registrations in .biz, .com, .info, .name, .net and .org top-level domains; however, many territories have their own DRPs, for example, Nominet’s DRP in the UK (.uk) and EURid’s Alternative Dispute Resolution Policy (ADR) in Europe (.eu). In those territories that do not have a DRP in place, companies have no choice but to pursue the alleged infringer in the courts. For more information, visit www.cpaglobal.com/domains or email domainnames@cpaglobal.com


This article first appeared in IP Review, issue 17