Enrico Schaefer is the founding attorney of Traverse Legal, PLC, a law firm specializing in web law. You can find out more about protecting your domain name, UDRP arbitrations and anti-cybersquatting laws at Traverse Legal’s domain name theft and trademark blogs.
Under the UDRP you have to show that the domain name in dispute is identical or confusingly similar to your trademark, that the respondent does not have a right or legitimate interest in the domain name, and that the respondent registered and used the domain name in bad faith in order to achieve the successful return of the domain name in question. One of the more common issues relating to a stolen domain name like the one referenced above is commonly referred to as "pornosquatting". In its simplest form, pornosquatting occurs when your trademark is used as part of a domain name for a website containing pornographic material. While one may assume that such a case easily fulfills the clauses of the UDRP, pornography alone may not be enough to show the bad faith required by the panels.
A classic case of "pornosquatting" will, however, suffice in front of the panel that will arbitrate the dispute. Pornosquatting has been held to be clear evidence of bad faith when:
(1) a trademark the pornosquatter does not own is used;
(2) the site to which the user is redirected is clearly pornographic;
(3) the site is commercial, (i.e. you must pay in order to access further pornographic images); and
(4) there is a "mouse-trapping effect" making it more difficult for the casual Internet user to leave the pornographic website.
As in all cases, even those where pornosquatting has occurred, the most successful complaints, or defenses, come from teams who know the law, work diligently to discover facts that may not be immediately evident, and communicate the party's best position to the UDRP panel.
When in a dispute, the history of the party's trademark and domain name are often the most important aspect of either sides case. Further, being able to present exhibits to support the party's position are essential, and may include: USPTO trademark registrations; public recognition of the trademark; marketing and sales date; snapshots of the website content housed at the domain name at different intervals in time; testimonials; and many others. In the end, having experience to know what works and what does not work when presented to the panel is priceless.
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- Preventing Domain Name Theft: Beyond the Udrp
- Combating Cyber-Squatting And Other Domain Name Maladies: An Overview Of UDRP Proceedings
- Your Domain Name Trademarks Questions Answered
- Domain Name System and Disputes Involved
- Pornosquatting: a Domain Name Theft Nightmare
- Domain Name Dispute Resolution: Choosing your Forum
- Reverse Domain Name Hijacking on the Rise
- Scam Alert II: Domain Hijacking
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