Imagine, if you will, the following scenario: You own a company. A number of years ago you registered the company name as a trademark. Today it suddenly dawns upon you that it is high time you conquered your technophobia and acquired a nice little website for your company. Happily you enter your company name with the trendy-sounding "dot com" in the application box of the domain name registrant. Lo and behold, this domain name is not available!! Hands trembling, you enter the coveted domain name in the Whois website to find out who the registrant is. Shock! Horror! Your arch-nemesis, your largest competitor, has registered your trademark as a domain name! He then has the gall to offer to sell it to you for one million dollars. What do you do??

Cybersquatting, or cyber piracy, involves the registration in bad faith of domain names that are identical or similar to trademarks owned by others. The most common examples of cyber squatting involve intent to extort money from the trademark owner, intent to profit from the resulting confusion with another's trademark, and intent to prevent a competitor from easily entering the Internet. Under the Anti-cyber squatting Protection Act of 1998, you may take a case against your competitor and an injunction will be granted if you can show that the domain name is distinctive or famous, that it is confusingly similar to your mark and that it was registered in bad faith.

You wonder whether this is worth all the time and expense. Your business is not doing as well as you would like. In fact, the idea behind a new website was to improve business by reaching a wider market. Never fear, since January 2000 a new speedy and cost-effective arbitration process has been in effect that makes it easier to recover domain names from cyber squatters.

The Internet Corporation for Assigned Names and Numbers (ICANN) is a non-profit organization that was formed in 1998 to coordinate the assignment of Internet domain names, IP address numbers, protocol parameter and port numbers, and the stable operation of the Internet's root server system. ICANN promptly set about developing a Uniform Domain Name Dispute Resolution Policy (UDRP) that came into effect January of 2000. The UDRP has resolved about 1500 domain name disputes thus far and filing fees range usually from about $750 to $3,500.

A dispute proceeding can be initiated by submission of a written complaint, setting forth all grounds for the complaint, to an ICANN-approved Dispute Resolution Service Provider. There are currently four authorized providers, WIPO, The National Arbitration Forum, the Dispute.org/eResolution Consortium and CPR Institute for Dispute Resolution.

Once the provider has reviewed the claim for compliance with UDRP rules, a copy is forwarded to the domain name registrant, who then has 20 days in which to file a response to the complaint.

The only remedies available to the complainant is either the cancellation of the infringing domain name, or the transfer of the domain to the complainant. The UDRP does not provide for the award of damages, so the cost of the arbitration is generally borne entirely by the complainant. Neither party is bound by the decision and may later bring an action in an appropriate court. However, compared with the huge costs and time involved in taking a case to court, the UDRP represents an affordable and speedy forum for resolving domain name disputes.

The complainant must establish the following three elements in order to be successful under the UDRP; (1) that the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) that the domain name registrant has no rights or legitimate interests in respect of the domain name; and (3) that the domain name has been registered and is being used in bad faith.

Some well-known trademark owners who have vindicated their intellectual property rights against cybersquatters through the UDRP include the World Wrestling Federation, the author of Bridget Jones' Diary, the owners of Penthouse magazine, the Marriot Hotel and Deutsche Bank.

While critics say that the UDRP is too all-encompassing and violates the First Amendment by making it difficult to find protest sites, or that it actively encourages reverse domain name hijacking by favoring large corporations with more famous trademarks over individuals or small companies, there is no doubt that the UDRP provides an effective weapon for trademark owners to deal with cybersquatters, who can no longer hold domain names for ransom.

"This article is prepared by Miller & Mitchell, P.C. We do not recommend acting on the information contained in this article without obtaining specific professional advice. These articles focus on broadly applicable legal principles. Contact Miller & Mitchell, P.C. for legal counsel."

For more information on e-policy and other workplace issues, contact Miller & Mitchell, P.C. rmiller@millermitchell.com

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