Domain name disputes are nothing new, and as a business you should be monitoring the potential use of your trademarks by those not authorized to use them. Eventually, the unthinkable will happen and you will find out that someone is using your trademark in their domain name. At this point you can send a cease and desist letter, pursue a Uniform Domain Name Resolution Policy “UDRP” Complaint, file a lawsuit, or do nothing. Most folks will not want to pursue a lawsuit due to the costs involved, but at the same time won’t be ignoring this type of infringement. That leaves you with the two most popular options, which are sending the opposing party a cease and desist letter, or filing a UDRP Complaint.
UDRP Complaints have various criteria that must be met in order for the Complainant to prevail. Before moving forward with a complaint, you may want to ask yourself if you can satisfy the three main criteria that every Complaint must have in order to be successful. The ICANN UDRP Policy includes these three main elements that a Complainant must prove, and they are stated within the policy as follows:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
True Value Company recently filed a UDRP complaint against the registrant of Truevalueweb.com with the National Arbitration Forum “NAF”. The Complainant undoubtedly has trademark rights in the mark “True Value” as evidenced from its use of the mark in connection with hardware products since 1963 and its registered trademarks and service marks. The perplexing part of True Value’s complaint is that it claims that there is confusion in the marketplace because the Respondent is offering similar services in connection with Truevalueweb.com. Since True Value Company is a hardware store and Truevalueweb.com offers web hosting services, I really don’t see how this is possible. Evidently, Complainant does offer web hosting and design services to businesses that are part of its cooperative, but not to the general public. This is certainly not the strongest argument, but an attempt nonetheless to satisfy a necessary element by illustrating consumer confusion.
The Complainant also argues that the Respondent’s website uses the same color scheme in an attempt to confuse people and make them believe that Respondent is in some way affiliated with Complainant’s business. A simple glance at the two websites is all you will need to conclude that this an odd claim. The folks over at domainnamewire.com have done an excellent job illustrating the oddity of Complainant’s assertions in their article, and I urge you to look at the screenshots that they provided. The final decision from the NAF, published here, references the three criteria I inserted above. The NAF decided that Complainant provided enough evidence to satisfy criterion number 1 above, but that it did not prove that Respondent had no rights or legitimate interests in the disputed domain name. Not being able to satisfy the second criterion, analyzing the third was not necessary.
If you do not want to pursue a UDRP Complaint, perhaps a cease and desist letter is better suited for your needs. This is a less formal option, but is certainly something to be taken seriously. If you are considering this approach then it may be worthwhile to review this rather humorous story about a New Jersey Township attorney’s letter to a citizen of West Orange, NJ, who is the owner of Westorange.info. Cease and desist letters should not be issued lightly, and diligent research is a key element to preparing a good one. In this situation, the West Orange Township attorney, Richard D. Trenk, issued the letter to a citizen who had registered a domain name that included the township’s name with the accompaniment of the “.info” domain extension. After reviewing the site, it is blatantly clear that there could be no confusion as to whether the site was affiliated with the official government website located at westorange.org. With that being said, the cease and desist letter was clearly not well thought out or planned. If you have a few minutes, and are up for a good laugh, then I encourage you to read the entire uproxx.com article referenced above including pro bono counsel’s response to West Orange Township attorney, Richard D. Trenk.
It is important for every business to police its trademarks to the extent possible, and this may involve sending cease and desist letters and filing UDRP complaints when necessary. If you are thinking of taking action, make sure that the necessary elements are in place prior to jumping the gun. If you have any questions about this, please feel free to contact one of our Internet attorneys.
By Taylor Hume