Jeff Johnson 2013-06-12 00:48:15
JeffJohnson, of counsel at Schmeiser, Olsen & Watts, handles the acquisition & protection of IP rights, including patents, trademarks, copyrights & associated litigation. Licensed in Michigan, Arizona & before the U.S. Patent & Trademark Office, he graduated from ASU Law School and holds an MBA from the U. of Michigan. Johnson is counsel to the Arizona Voice for Crime Victims, providing legal assistance to victims of violent crime in Arizona. He also provides pro-bono services as an Alliance Defending Freedom Allied Attorney, serves on the boards of Bair Lake Bible Camp & AZStRUT, & serves as a legal advisor to Family Watch International. For more info, call (480) 655-0073 or email email@example.com As a business owner, you have spent years, scarce financial resources, and a great deal of effort developing a solid reputation for your products and services in the marketplace. Your customers and the public at large have come to associate this hard-earned reputation with your company name and other names or marks used by your business in conjunction with your goods and services. Suddenly, you are faced with a business or individual jeopardizing all of the effort and resources you’ve spent building up the goodwill in your names and marks. They are utilizing a domain name that is the same as or similar to your company’s name and marks, and are using that domain name to harm your business. What should you do? The first response of many companies to this not-too-infrequent scenario is to litigate and force the business or individual to cancel the domain registration or transfer the domain to you and to pay damages for infringing your mark. Although this is often a viable strategy, it can be extremely time consuming and expensive, with some lawsuits stretching on for years and costing hundreds of thousands of dollars. This is not a good option for companies on a tight budget or that are looking for a quick resolution. Fortunately, there is another alternative. The Uniform Dispute Resolution Policy (“UDRP”) can provide relatively quick relief at a cost that won’t break the budget. In some cases, using the UDRP can result in a decision within as little as forty-five days for as little as $1500. What is the UDRP? At a high level, the UDRP is best thought of as a mini-lawsuit. The initiating party (analogous to the plaintiff in a lawsuit) files a complaint with an Internet Corporation for Assigned Names and Numbers (“ICANN”) provider, alleging that the domain name holder (analogous to the defendant) is improperly using the registered domain name and that the domain name registration should either be canceled or assigned to the initiating party. The domain name holder has an opportunity to respond by filing an answer, after which the ICANN Panel will render a decision. Key differences from litigation, aside from the already-mentioned reduced cost and time for a decision, include that the panel is a private body (as opposed to a court of law), that the panel can only decide on the disposition of the domain name (who owns it), and that the panel cannot award any costs, damages, or fees. Despite the fact that the UDRP procedure is not a legal proceeding before a court, it is important that those considering use of the UDRP to go after infringers or who find themselves on the receiving end of a UDRP complaint, seek legal counsel. Both the complaint and the answer must effectively address the legal and factual bases for the relief requested or challenged in the UDRP proceeding. Since the UDRP Panel will base its decision on the law surrounding the registration and use of domain names, complaints and answers that fail to effectively identify and argue the legal issues will not likely be successful. Furthermore, due to tight timelines associated with the UDRP proceedings, it is imperative to retain legal counsel immediately upon receipt of a UDRP complaint or a URDP panel’s unfavorable decision. When evaluating the plusses and minuses of utilizing a UDRP proceeding to resolve an Internet domain name dispute, it may be helpful to keep in mind the flow of a typical UDRP proceeding. First, a complaint is filed with a selected ICANN UDRP provider. In terms of its content and format, the complaint must comply with both the UDRP complaint rules and the supplemental complaint rules specific to the selected ICANN provider. In addition, the complaint must allege a sufficient legal basis for the ICANN provider to grant the requested relief (either cancellation or transfer of the domain name(s) in question). Finally, the complaint must include a request for either a single-member panel or a three-member panel to decide the dispute. Next, the selected UDRP provider notifies the defendant of the complaint. The defendant has twenty days from the commencement of the proceeding to file an answer. It is critical to note that if the defendant does not respond within the proscribed time period, the UDRP provider can decide the dispute against the defendant based only on the plaintiff’s complaint, possibly granting the plaintiff’s requested relief. After the defendant has responded, the UDRP provider appoints a panel within five days. Within fourteen days of this appointment, the panel will issue its decision. As noted above, the decision will either allow the current registrant to maintain the ownership of the domain name, order the cancellation of the domain name registration, or order the transfer of the disputed domain name to the plaintiff. The panel has three days to notify the parties of its decision. Once the panel has issued its decision, the parties have ten days to file suit in a court of competent jurisdiction, as defined in the UDRP rules, to challenge the decision. Absent a filed court challenge, the registrar of the domain name will implement the panel’s decision. If the losing party files a court challenge within the ten-day period, the registrar will take no action until the completion of the litigation. There are other considerations associated with using the UDRP. As noted, UDRP proceedings move very quickly and can be completed in forty-five days, although some cases take longer. In addition to the cost and time efficiencies associated with UDRP proceedings, it is also possible to pursue multiple domain name disputes in one action, provided the domain names are owned by the same respondent/defendant. If the UDRP process is selected to resolve a domain name dispute, it is important to carefully consider the remedy sought. Although many companies might be satisfied with simply having the domain name canceled, keep in mind that cancellation will put the domain name back on the market, available for purchase by new infringers. Therefore, it might make sense for the initiating party to have the domain name transferred, giving the business control of the domain name and preventing other would-be infringers from purchasing it. In some cases, litigation might be the right decision to protect business and trade names—especially when seeking monetary damages. However, if low cost and speed of resolution are primary considerations and monetary damages are not an issue, the UDRP proceeding is a very attractive option. When dealing with complex intellectual property matters, including domain name infringement and ownership issues, it is always best to consult legal counsel to help determine the optimal course forward.
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