Preventing Domain Name Theft: Beyond the Udrp

The current Uniform Domain Name Dispute Resolution Policy (UDRP) offers a relatively quick and cost effective mechanism to independently resolve disputes that arise from the abusive registration of trademarks as domain names. In order to achieve the tranfer of a domain name, a complainant must show a UDRP panel that the domain name in dispute is identical or confusingly similar to its 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.

However, the UDRP is not without its share of problems. The first major fault with the UDRP is the fact that it is only a curative solution, meaning it provides relief after a violation has already occurred. For example, a cybersquatter can register an IP owner's identifiers forcing the aggrieved owner to file for relief from the UDRP. In essence, the UDRP seeks to return the damaged IP owner to as good as a position as he was before the cybersquatting. But in reality, this is not possible because of the damage done to the trademark after it was poached and used in bad faith.

Second, the UDRP has no preventative measure to protect trademark holders from cybersquatters. Theoretically, the only way IP owners can protect themselves as new gTLDs are introduced is by registering their entire trademark portfolio. Because of this anarchy, IP owners compete with cybersquatters for their own trademarks.

Third, there are no provisions in the UDRP to deal with the situation where IP owners want to protect their trademarks in sponsored gTLDs but are restricted because the TLD is reserved for those entities that qualify in the particularized and specialized space.

Fortunately, there are ways to protect your trademarks, and other domain names for that matter, even if it is not within the UDRP. While no uniform IP protection mechanism to combat the unauthorized registration of domain names currently exists, you can heed recommendations, such as those made by WIPO, and perform your own preventative care.

One example of "preventative care" is to use defensive registrations, or register domain names in the existing TLDs (such as .com, .net, etc.) and new gTLDS (such as .mobi), even though you may assume one TLD is enough. Further, in order to ensure that you hold the monopoly over your own trademarks, it is important to be aware of when such new gTLDs are to be made available and ensure that you take advantage of any sunrise period. These are periods following the introduction of a new gTLD which affords trademark holders the right to register prior to the general public. This way, you have time to collect the registries that connect to your trademarks before cybersquatters.

In the end, a successful defense against cybersquatters and protection from domain name theft, leaves the trademark owner with the relevant domain names for all of the TLDS and gTLDS that make up the internet. Luckily for you, this doesn't mean that you have to create dozens of websites dedicated to the same company, because you can simply route all traffic to a single .com or .org site.

Protection against stolen domains is best achieved by one who is able to recognize the common tactics of cybersquatters in both existing and newly offered gTLDs, and actively prevent unauthorized registration of domain names similar your trademark. If you would like help in this type of protection, it is best to contact a domain name lawyer; one with experience in cybersquatting, domain name disputes, and trademarks, who can assist you in protection mechanisms and help prevent an unnecessarily forced run-in with the UDRP.