Companies cannot survive, let alone thrive, in today’s business environment without an Internet presence. Businesses and brands maintain websites and social media profiles in order to advertise and market products and services, but also to interact with customers. Social media in particular has given businesses an unprecedented ability to reach out to customers and to respond to their concerns. With this ability, however, comes the risk that unauthorized third parties will register an Internet domain with a company’s or brand’s name, or a deceptively similar name, and create a misleading or even harmful website. The practice of registering an Internet domain using the name of a trademarked brand is often known as “cyber-squatting.” Businesses and people who are the victim of cyber-squatting have remedies through a process established by several organizations that oversee and regulate Internet domain names.
The Internet Corporation for Assigned Names and Numbers (ICANN) is a private nonprofit corporation based in Los Angeles, California. It represents a collaboration between government agencies and several private organizations. ICANN has final responsibility for assignment of domain names, IP addresses, and other identifying information used by machines on the Internet.
In order to effectively handle disputes or complaints relating to domain name registrations, ICANN enacted the Uniform Domain Name Dispute Resolution Policy (UDRP). Anyone who owns or registers a domain name with a “.com,” “.org,” or “.net” top-level domain has agreed to abide by the terms of the UDRP by virtue of their agreement with their domain name registrar.
Anyone who owns a trademark and believes someone has used it for cyber-squatting can file a complaint under the UDRP with one of four “dispute-resolution service providers” designated by ICANN. The trademark owner must prove that the domain name is identical or deceptively similar to the trademark, that the domain name owner has no legitimate legal right to or interest in the trademark, and that the domain name owner is using the trademark in bad faith. A panel of one to three arbitrators will review the complaint, response, and any evidence. The panel may hold an arbitration hearing. It acts as both judge and jury in the arbitration process, which is essentially a trial conducted by a private company. The panel’s decision may have the force of law, but it is not part of the court system.
Apple, the global computer company, recently won a dispute over a domain name based on the name’s substantial similarity to Apple’s trademarked brand. A man in Poland registered the name “aplestore.com,” which was very similar to Apple’s “applestore” website and its chain of “Apple Stores.” The Polish site hosted a website consisting entirely of advertisements. Apple brought a complaint to the World Intellectual Property Organization (WIPO), one of the four dispute-resolution service providers authorized by ICANN. The arbitration panel awarded Apple the rights to the name in early June. Apple reportedly has thirteen more complaints pending with WIPO. It has gained control of several domains this year without arbitration, including “applle.com” and “applecom.com.” In those cases, the domain name owners turned them over to Apple when the complaints were filed.
The California Internet security lawyers at the Law Offices of Salar Atrizadeh guide businesses and individuals through the regulatory and transactional pitfalls of the Internet, using legal knowledge and technological skill to create innovative solutions for our clients. Contact us today online or at (310) 694-3034 to set up a confidential consultation.
More Blog Posts:
Judicial Challenges with Bittorrent Lawsuits, Internet Lawyer Blog, June 11, 2012
Personal Jurisdiction on the Internet, Internet Lawyer Blog, May 13, 2012
New Laws and Guidelines on Cybersecurity Disclosures Both Protect and Endanger Personal Information, Internet Lawyer Blog, April 17, 2012
Photo credit: ‘ICANN Headquarters’ by Coolcaesar at the English language Wikipedia [GFDL or CC-BY-SA-3.0], from Wikimedia Commons.