Dealing with Cybersquatters – specifically Manilla Industries

If you are looking to purchase a domain name owned by a Cybersquatter and not sure how to get it if they are overseas you do have an option. According to ICANN you can file what is called UDRP complaint and if you have a solid grievance then the domain name may be released to you.

Under the UDRP, a registrant represents, among other things, that to his knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party. See UDRP § 2. Nevertheless, in violation of this section, registrants commonly incorporate registered trademarks of third parties into domain names, such as by slightly altering the spelling of the mark (“neimanmarkus.com”), by adding extra words to the mark (“supportnovell.com”), or by including “www” into the domain name (“wwwchevron.com”).

The owner of the trademark may seek recourse against such a domain name registrant by filing a complaint with a dispute resolution provider approved by ICANN. Approved providers include the National Arbitration Forum (“NAF”), the World Intellectual Property Organization (“WIPO”), CPR Institute for Dispute Resolution (“CPR”), and eResolution.[3] Each provider follows the UDRP as well as its own supplemental rules.

Under the UDRP a complaint must allege that (i) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (ii) the registrant has no rights or legitimate interests in respect of the domain name; and (iii) the domain name has been registered and is being used in bad faith. In the administrative proceeding, the complainant must prove that each of these three elements is present. See UDRP § 4(a).

Evidence of bad faith includes, but is not limited to, showing that (1) the registrant acquired the domain name primarily for the purpose of selling it to the owner of the trademark for consideration in excess of the registrant’s documented out-of-pocket costs directly related to the domain name; (2) the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or (3) the registrant intentionally attempted to attract Internet users to its web site for commercial gain by creating a likelihood of confusion with the complainant’s mark.

Once the complaint is filed and the arbitration is initiated, the registrant has an opportunity to respond. A panel of one or three arbitrators, depending on the request of the parties, reviews the complaint, response, and any supporting documents. The panel then decides to transfer the domain name, cancel the registration, permit the registrant to keep the domain name, or dismiss the complaint.

A very high percentage of complaints results in the domain name being transferred to the complainant. For example, out of 6648 complaints filed under the UDRP to date, 5239 (78.8%) of those have resulted in transfer to the complainant, while only 1319 have resulted in a decision for the registrant, the remaining decisions being split between the parties or cancellations of the registration. See Statistical Summary of Proceedings Under Uniform Domain Name Dispute Resolution Policy at http://www.icann.org/udrp/proceedings-stat.htm.

Read the full case law

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