Domain Name Disputes

Protecting Brand Rights in the Domain Name System

Domain names serve as critical digital addresses that identify businesses online, making them valuable extensions of brand identity that require protection against cybersquatters, typosquatters, and other bad actors. When conflicts arise between domain name registrations and trademark rights, efficient resolution mechanisms can recover domains without costly litigation. This practice helps clients protect their brands in the domain name system through strategic registration, monitoring, and enforcement across global domain space.

UDRP Proceedings

The Uniform Domain Name Dispute Resolution Policy provides an efficient administrative mechanism for recovering domain names registered in bad faith. UDRP applies to generic top-level domains like .com, .net, and .org, as well as many country-code domains that have adopted the policy. To prevail, complainants must demonstrate that the domain name is identical or confusingly similar to a trademark in which they have rights, the registrant has no rights or legitimate interests in the domain name, and the domain name was registered and is being used in bad faith. UDRP proceedings move quickly—typically 60-90 days from filing to decision—at costs far below federal court litigation. Counsel prepares compelling complaints, responds to procedural requirements, and presents evidence and argument that maximize success rates.

URS Proceedings

The Uniform Rapid Suspension system provides even faster relief for clear-cut cases of cybersquatting in new generic TLDs. URS uses a higher burden of proof than UDRP—complainants must demonstrate clear and convincing evidence of bad faith—but offers lower filing fees and faster resolution, typically within 30 days. Successful URS complaints result in domain suspension rather than transfer, with the domain remaining suspended for the balance of the registration period. Counsel evaluates whether URS or UDRP is more appropriate for specific disputes and pursues the optimal strategy for each situation.

ACPA Litigation

The Anticybersquatting Consumer Protection Act provides federal court remedies for cybersquatting, offering certain advantages over administrative proceedings. ACPA allows recovery of statutory damages up to $100,000 per domain name, providing deterrence that administrative proceedings lack. In rem jurisdiction permits suits against domain names directly when registrants cannot be located. ACPA claims can be combined with trademark infringement and dilution claims in comprehensive enforcement actions. Federal court proceedings also provide discovery rights unavailable in UDRP. Counsel pursues ACPA litigation when circumstances warrant more powerful remedies than administrative proceedings provide.

Country-Code Domain Disputes

Country-code top-level domains like .uk, .de, .cn, and .au each have their own dispute resolution policies that may differ from UDRP. Some ccTLDs follow UDRP closely while others have unique requirements, evidentiary standards, and procedures. Local presence requirements may affect who can hold certain ccTLD registrations. Understanding the specific procedures and substantive standards for relevant ccTLDs is essential for effective cross-border domain enforcement. Counsel has experience with dispute resolution across major ccTLDs and coordinates with local counsel where specialized expertise is required.

Proactive Domain Protection

The most effective domain strategy prevents disputes rather than litigating them after the fact. Proactive protection includes comprehensive domain registration covering core brands across relevant TLDs and ccTLDs, defensive registration of common misspellings, typos, and variations, monitoring services that alert to potentially infringing registrations, rapid response to new registrations before bad actors establish presence, and portfolio management ensuring renewals are maintained and coverage remains appropriate. Strategic domain programs balance comprehensive protection against cost, focusing investment on domains that actually matter.

New gTLD Challenges

The expansion of generic top-level domains from the original handful to over a thousand has multiplied domain protection challenges. New gTLDs create additional cybersquatting opportunities across more extensions. Trademark Clearinghouse registration provides priority rights and blocking options in new gTLDs. Sunrise and claims periods offer early protection opportunities when new TLDs launch. Ongoing monitoring must now cover far more domain space. Counsel helps clients develop strategies for protecting brands across the expanded gTLD landscape while controlling costs.

Domain Portfolio Transactions

Domain names can be valuable assets in their own right, warranting attention in corporate transactions and sometimes trading as standalone assets. Due diligence for domain acquisitions examines registration history, any disputes or claims, renewal status, and transfer requirements. Asset purchase agreements for domains should address representations about ownership and validity, transfer mechanics, and post-closing obligations. Counsel supports domain transactions to ensure smooth transfers of valuable digital assets.