Trademark Law

The mere holding of an infringing domain name without active use can constitute use in bad faith under the UDRP.  Despite this, all too often trademark owners watch as domains are registered that incorporate their trademark.  Unfortunately for the trademark owner, they think costly litigation under the ACPA is the only means of redress for what appears to be clear cybersquatting.  While the UDRP is cost effective and efficient, there is a general understanding (or more appropriately misunderstanding) that there must be a use of the domain name in order to file a UDRP complaint and win the UDRP.  In fact, the rules for the Uniform Domain Name Dispute Resolution Policy, states that the domain name must have been registered in bad faith and used in bad faith to satisfy the policy.  Registration in bad faith was, and continues to be perceived by some, as not enough.  That said, recent panels have held that a Respondent?s failure to make an active use of the web site, such as merely parking the web site with a web hosting company, is enough to satisfy bad faith registration and use under policy paragraph 4(a)(3).

Therefore, there are ways to show that bad faith use can be inferred so as to allow a UDRP to be successful against a clear cybersquatter.  While proof that the registrant has tried to sell the domain to the trademark owner, that the registrant has tried to prevent the trademark owner from registering the domain itself, that the web site at the infringing domain is being used to disrupt business of a competitor, or that the infringing domain is used to intentionally attract users by creating a likelihood of confusion with the trademark owners mark strengthen your chances of winning your UDRP, bad faith registration and an inference of bad faith use despite no use at all may be enough to win a UDRP.