Fun Friday afternoon topic: domain name disputes

[Jason Clifford]

On Fri, 2010-02-05 at 14:29 +0100, mirod wrote:
> My friend owns the trademark for the name in Europe, the US and Asia. It is a
> very distinct name and a Google search on the name returns only hits related to
> her product.
>
> So it looks like a clear case of cyber-squatting to me.

It might be. It depends upon whether the domain name was registered in
bad faith (see http://www.icann.org/en/udrp/udrp-policy-24oct99.htm for
details) or not.

Do bear in mind that Trademark protects a name in relation to a specific
market segment and is not universal so if the current registrant was
using the name in connection with some other market segment or not
commercially and specifically in a manner not likely to cause confusion
as to who was using it your friend might not have a right to try and
take the domain via a DRP.

> I am not sure what she can do about it though. It seems like the only solution
> is to go to court, and there have been very few cases that went to trial.

Perhaps the registry operator the domain was registered through (as
shown in the whois record) operates a dispute resolution service
although many of them effectively don't.

WIPO is an option for a dispute on a .com domain but it will be
expensive and slow. It's really designed to accommodate the needs and
desires of larger companies.

If the person who has registered the domain is based in the UK taking
them to court over the matter should not be too hard. If they are
elsewhere you might well have to bring action in a US court which will
be expensive.