Introduction to Domain Name Dispute Procedures

By now, everyone who follows legal issues relating to the Internet is intimately familiar with the concept of "cybersquatting," the practice of registering and using a well-known trademark in a domain name in bad faith either to keep it away from its rightful owner or to exact a profit from the owner in exchange for the return of the name.

Laws, such as the AntiCybersquatting Consumer Protection Act, allow trademark owners to use the courts for relief against cybersquatters, but court battles often prove long and expensive.

As a result, the Internet Corporation for Assigned Names and Number (ICANN), the quasi-governmental body assigned to establish rules of the road for the Internet, created a limited administrative remedy that allows trademark owners and others having rights in a disputed domain name to get their name back.

That remedy is contained in a procedure known as the Uniform Domain Name Dispute Resolution Policy (UDRP), a policy originally intended to be used as a cost-effective weapon against those who register domain names in violation of the rights of trademark holders or others having rights in a disputed domain name.

Under the policy, complainants must prove, among other things, that the current domain name registrant both registered and used the disputed domain name in "bad faith," and that the current registrant has no legitimate interest in the name.

Since its creation, the majority of the cases brought under the UDRP have resulted in victories for trademark holders and other complainants, sometimes even against the so-called "little guy" and sometimes against registrants who did not even make commercial use of the name.

But an increasing number of recent cases have relied on an underreported provision of the UDRP to highlight a growing trend that should make causal complainants less sanguine about their ability to win a UDRP proceeding just by showing up and claiming bad faith simply because they own a trademark. That trend, known as "reverse domain name hijacking," describes a practice in which trademark holders engage in a bad-faith attempt to use the UDRP to wrongfully strip the legitimate registrant and user of a desired domain name simply because the complainant holds a trademark in that name or one similar to it.

Understanding the concept of reverse domain name hijacking will be helpful if you see yourself as "David" against "Goliath" in a domain name dispute. However, without question, it's the complainant who especially needs to understand this concept, to avoid crossing the line that has been drawn and ruining its chances for relief under the UDRP and, possibly, other forums as well.

More at: http://www.gigalaw.com/articles/2002-all/hollander-2002-03-all.html