Contrary to the expectations of many, the mandatory dispute resolution process for domain name disputes cannot be used to successfully resolve many cases of trademark infringement that involve domain names.
Since about 2000, most domain name registrants have been subject to a mandatory dispute resolution process that will allow a trademark owner to cancel or transfer a domain name when the following conditions are met:
- the domain name is identical or confusingly similar to a mark in which the complainant has rights;
- the domain name registrant has no rights or legitimate interests in respect of the domain name; AND
- the domain name has been registered AND is being used in bad faith.
Unfortunately, these conditions have been read narrowly by the arbitrators charged with hearing domain name disputes. In sum, the above conditions have generally been treated as strictly conjunctive.
In other words, even if the domain name is identical or similar to a trademark and the registrant has no legitimate interest in the domain name, the arbitrators will often refuse to order the domain name transferred to the trademark owner unless the domain name was:
a. registered in bad faith at the outset;
b. is currently being used in bad faith.
For example, a domain name complaint is not likely to be successful if:
- the domain name was registered for speculative purposes prior to the adoption of the trademark by the trademark owner;
- the domain name was registered with the permission of the trademark owner before its relationship with the registrant was terminated; or
- the domain name was registered without any knowledge of the prior rights of the trademark owner.
Even if a domain name complaint is not defended by the registrant, the arbitrator will proceed to consider the complaint on the merits so evidence of "bad faith" is mandatory to achieve a successful result.
The complaint procedure for domain name registrations is intended to be used exclusively to compel the transfer of domain names when a third party deliberately registers the domain name with the intention of interfering in the trademark owner's business or to demand a ransom from the trademark owner for its transfer.
For other cases of alleged trademark infringement that involve domain names, the parties must still seek relief from a court of competent jurisdiction.