Part of every entrepreneur’s responsibility is to protect his/her business assets.
In particular, business owners need to shield their brands and proprietary information from external factors that can negatively affect their operations; and among the threats, they must look out for is a trademark infringement.
The good news is that, in the digital realm, business owners can rely on the Uniform Domain-Name Dispute Resolution Policy (UDRP) established by the Internet Corporation for Assigned Names and Numbers (ICANN) to protect their intellectual property rights.
The UDRP is the basis for resolving disputes concerning the registration of Internet domain names.
That said, the UDRP process is hardly ever clearcut. So what makes for a good UDRP case standing a good chance of winning vs. one that does not? And what tools can be used in the preparation of such cases?
These are some of the questions this post aims to answer, notably considering how entrepreneurs can protect their brands and other intellectual properties from infringement with the help of a WHOIS lookup tool.
What UDRP Cases Entail
Since the implementation of the UDRP, ICANN has been dealing with an ever-increasing number of domain disputes. But that is not surprising given how easy it is to mimic popular brands and sell counterfeit products online.
To win a UDRP case, the brand owner must prove three things:
- The domain name is identical or confusingly similar to a trademark or service mark that the complainant has rights to.
- The registrant does not have any rights or legitimate interests in the domain name.
- The domain name was registered and is being used in “bad faith.”
Why UDRP Cases Fail
There are various reasons why UDRP complainants don’t win their cases, however. To illustrate some of these, let’s take a look at concrete examples.
- The complainant can’t prove he owns trademark or service rights.
Note that the complainant must own the trademark rights to a disputed brand. Any complainant who has no legal right to a specific term can’t likely claim a disputed domain.
That can be a bit muddled in cases where brands take the form of ubiquitous words that can figure in anyone’s domain.
Take the case filed by Gordon Sumner, also known professionally in the entertainment industry as “Sting.” He filed a suit against Michael Urvan about the domain sting[.]com.
Sting didn’t win his case as he was unable to provide legal documents to prove that he had trademark rights on the word “sting.”
- The defendant has legitimate interests in the domain name.
Complainants may also fail to win disputes if the defendant can prove that he/she has legitimate interests in using a domain name.
Take the case of Porsche, which filed a case against Simon Chen, who owned the domains porscheexperience[.]com and porscheguides[.]com. While Chen has no official ties to the car manufacturer, he did use the said domains to promote his books about Porsche cars.
He also proved that he never made any claim that the domains were in any way affiliated with the company and so he should not be considered a cybersquatter.
- The domain name was not both registered and used in “bad faith.”
Both conditions (i.e., registration in bad faith and use in bad faith) must be satisfied to win a case.
In some cases, while the complainants successfully prove that the defendant uses the domain name in bad faith, they fail to gather enough evidence to satisfy the first condition.
That is what happened to the case of nectarbeauty[.]net. Nectar International Limited and Desmo Enterprises Limited, the complainants who owned a trademark for “Nectar” and marketed their products on the site nectarinternational[.]co[.]uk, failed to prove that Arej Net initially registered the disputed domain in bad faith.
What Is WHOIS Lookup and How Can It Help Business Owners Gather Proof for UDRP Cases?
A WHOIS lookup tool allows users to gather key facts about any domain or IP address. It can provide business owners with details that include:
- Domain’s age
- Abuse contact email address
- Dates when the domain was created and last updated and will expire
- Registrar name and contact details
- WHOIS server
- Domain status
- Registrant name and contact details
- Technical, billing, and administrative contact details
- Name servers
Entrepreneurs can use this information to obtain relevant evidence that they can present to the UDRP committee.
How to Use WHOIS Lookup for Gathering Evidence
Let’s consider this scenario. While browsing the Internet, say you stumbled upon a domain that looks very similar to yours. Upon closer inspection of the website, you notice that it sells the same products as you do. The site can very well be riding on your brand’s popularity.
You know that your brand is trademarked, too. Of course, you don’t want your customers or any site visitor for that matter to end up on the said site. And so, you would like to file a UDRP case. You’ll need solid proof. Here’s how you can get it.
- Get all the relevant details about your trademark registration.
You most likely have this on hand. Take note of when you gained trademark ownership.
- Investigate the domain look-alike using WHOIS Lookup.
Look for the domain look-alike’s WHOIS record. That will tell you the domain’s creation date. Make sure that the date is later than when you obtained the trademark.
If it is, then you’ve already satisfied the first condition for a UDRP case (i.e., registration in bad faith).
- Use WHOIS Lookup to compare domain registration dates.
Compare the look-alike’s and your domain’s registration dates as well. Proving that you’ve had the domain that contains the trademarked brand longer can serve as additional evidence.
Also, if the domain under inspection had had several owners, it might be relevant to explore the entire WHOIS history provided by WHOIS History Search to gather a comprehensive picture of the case.
- Pool all other evidence from intensive research.
Go through the website’s content thoroughly. Compare your products with the one it sells. The more evidence that points to it mimicking your brand, the better. State clearly your brand’s origin.
You should be able to dispute every potential reason the look-alike’s owner can use to prove he/she has rights or legitimate interests in using the domain name.
Selling the same product and mimicking your domain (if you registered it first and obtained a trademark for it) should be enough to satisfy the third condition.
When you’ve done all that, you can file your case.
Business owners should never leave anything to chance. They must take measures to ensure brand protection at all times.
And should they ever face a situation where cybersquatters are abusing their trademark rights, they can always rely on tools like WHOIS Lookup or its counterparts WHOIS History Search to build a strong case against offenders.
About the Author
Jonathan Zhang is the founder and CEO of Threat Intelligence Platform (TIP)—a data, tool, and API provider that specializes in automated threat detection, security analysis, and threat intelligence solutions for Fortune 1000 and cybersecurity companies. TIP is part of the WhoisXML API family, a trusted intelligence vendor by over 50,000 clients.