Did someone register a domain name that mimics your trademark?
You may be able to get the domain name without having to go to court if you use the Uniform Domain Name Resolution Policy (UDRP).
Watch this video!
UDRP, or Uniform Domain Name Resolution Policy, is this procedure that allows trademark owners to take a domain name that was registered by somebody else in bad faith.
So if you own a trademark—and I'll get to it in a moment as to what kind of trademark it can be, and somebody else knows your brand and they got the domain name that's confusingly similar with your brand and they registered it in bad faith, this procedure allows you to have that domain name transferred over to you without you having to go to court, without you spending years and years litigating this, without you having to spend tens and tens and thousands of dollars to get it.
So, a few things that I will mention about the process. First of all, what kind of a trademark. It doesn't matter in which country your trademark is registered. As long as you have a trademark, and it doesn't really even have to be a registered trademark. If you have sufficient business presence in a jurisdiction that recognizes unregistered trademarks, and you may want to go back to one of this videos in the list where I am explaining what unregistered trademarks are and which jurisdictions recognize them—if you are well known in that jurisdiction that recognizes unregistered trademarks, you can use Uniform Domain Name Resolution Policy but the vast majority of cases, and especially those where the complainant, the trademark owner was successful, the trademark owner had a registered trademark at least in one jurisdiction. And it has to be a legitimate registration that's linked to a real business, so you can't just go and register your trademark, in one of those jurisdictions that allow you to quickly and easily get a trademark, even if you have no plans of doing business there. It has to be a legitimate registration.
The domain name that UDRP allows you to go after is basically every common domain name out there, so .COMs, .NETs, .ORGs and some of the new ones. Many countries have their own national rules, they are similar, they are not identical, so for example, .CA for Canada has some similar but not identical rules about what can be done. Many other national registries have similar rules, while some of them have no rules like this. This video is just about the common ones, so the .COM, .NET, and .ORG.
So, if somebody registered a domain name that's confusingly similar to your trademark, you can go after them with UDRP. Now, the important thing is that the domain name must have been registered in bad faith. So somebody who did it knew about your brand and they registered it either in order to sell it to you or in order to prevent you from reflecting your brand in that domain name. It is something that you need to prove.
What matters is that the domain name must have been registered after you have your rights to the trademark.
I will share with you a story. Trademark Factory is a good example. When I came up with a name, TRADEMARKFACTORY.COM was already taken. It wasn't used, nobody was using it, but somebody registered that domain name and at that point, I got TRADEMARKFACTORY.CA. We were starting in Canada, most of the business at that point was coming from Canada, so we got the .CA. And I wrote to the domain name owner and said, would you be willing to let go of the .COM? And they wanted to get some ridiculous amount of money—at that point, I thought it was ridiculous because I wasn't sure if the brand is going to stick.
But next year when I realized that what I have built is a viable business with a great model that a lot of business owners not just from Canada but from around the world want to use to get their trademark registered, I realized that there is a lot of value in the brand. So I wrote to them again and never heard back. And then I wrote again and never heard back. So what I was looking at that point was when is the domain name going to expire. And about a month before the expiration date for the domain name registration, I started getting all those e-mails from a ton of registrars, "This domain name is just about to expire, would you be willing to do a backorder and start this auction to get the domain name?"
So what I did was I called my own registrar and I said, "Look, there is this domain name, TRADEMARKFACTORY.COM that's going to become available. I want to make sure that I end up getting it." And there is this procedure that allows you to back-order, so I did that and in order to go through the process of this back-ordering, you're supposed to give a bid. What's the maximum amount you are willing to pay to the registrar if there is a bidding war for the domain name. And I said, "$1,500." And the registrar asked, "Why only $1,500? Isn't it brand worth more?" So I responded, "Of course, it's worth a lot more, but $1,500 is what it will cost me to take this domain name through the Uniform Domain Name Resolution Policy from anybody, anybody other than the current owner". So the only person I couldn't go after was the guy who registered the domain name TRADEMARKFACTORY.COM before I registered my trademark before I started having rights in my trademark.
So they were the only ones I couldn't go after, but by registering my trademark, I became the market of one for them because if they were to sell the domain name to anybody else, could use Uniform Domain Name Resolution Policy to take that domain name from a new buyer very easily.
And we've actually used this strategy many times helping our clients negotiate domain name transfers because here is the thing, if somebody took your domain name and they were there first, you can't use Uniform Domain Name Resolution Policy against them, but they are not really using the brand, there is nothing on the website, just a parking page. So you go to them and say, "Look, you can't sell it to anybody other than us. Let's be reasonable, let's come up with a way to make you happy and make us happy!" And that's worked more than once. So, here is another reason to register your trademarks
So importantly, again, remember: in order for this to work, the domain name must have been registered in bad faith. So if somebody else has a similar trademark in a completely different industry, you can't use Uniform Domain Name Resolution Policy against them. Or if they have some legitimate reason to be able to use that brand or reflect that brand in their domain name, again, you can't use it. So for example, let's say somebody has a trademark in the US and somebody else has a trademark for the same name in France, just because these are different countries doesn't mean that one is better than the other. You only can use UDRP in a limited amount of circumstances, where it's easy for you to prove that the domain name was registered in a bad faith, there is a list of reasons that fall under that definition, and if you need more specific help, we are happy to consult you on this, but again, 3 requirements:
You must be the owner of the trademark,
the trademark must be confusingly similar to a domain name registered by somebody else, and
That domain name must be registered by them in a bad faith.
Disclaimer: Please note that this post and this video are not and are not intended as legal advice. Your situation may be different from the facts assumed in this post or video. Your reading this post or watching this video does not create a lawyer-client relationship between you and Trademark Factory International Inc., and you should not rely on this post or this video as the only source of information to make important decisions about your intellectual property.