Haynes Boone Associates Mike McArthur and Katie Eissenstat achieved a win for a firm client, a nationwide specialty retailer, recovering an infringing third-level domain name, which incorporated the client’s name, via the CentralNic Dispute Resolution Policy (CDRP), a largely unknown but powerful tool for brand owners.
Bad actors frequently use domain names to infringe on the goodwill of well-known brands and perpetuate illegal and damaging schemes. One rare but harmful way this is accomplished is through a third-level domain with a country code top-level domain “ccTLD” (.US, .EU, .UK, etc.) combined with a generic top-level domain “gTLD” (.com, .org, .net, etc.). Consumers are particularly susceptible to falling victim to scams with such domains because they can appear virtually identical to the rights holder’s domain name, only varying by the ccTLD (i.e., name.us.com), which creates the impression that the infringing domain corresponds with the rights holder’s legitimate country-specific website.
The usual domain dispute resolution policies are generally unavailable for third-level domains, limiting options for cost-effective enforcement in such cases. However, if the third-level domain is sold by CentralNic Registry, which has registered .US.COM, .EU.COM, .UK.COM, among others, then the rights holder can use the relatively new CDRP proceeding, which is much faster and cheaper than a lawsuit. The CDRP shares similarities with the more popular Uniform Domain Name Dispute Resolution Policy (UDRP), but it also has key differences. Most notably, the rights holder must initiate and participate in a mandatory 10-day mediation procedure with CentralNic before a CDRP complaint can be filed. Additionally, a CDRP only requires the owner of a trademark prove either that the infringing domain was registered or is used in bad faith, whereas a UDRP requires both be present.
The current dispute arose after the Respondent (an individual in Iceland) registered the infringing third-level domain name in late 2021 and built a website that displayed Complainant’s trademarks in an effort to perpetuate a pay-per-click scheme by diverting traffic to Respondent’s site.
Haynes Boone filed the CDRP complaint on March 24, 2022, with Forum, the leading arbitration and mediation administrator in the U.S. On April 22, the appointed panel issued a ruling, finding (1) the registered domain name was confusingly similar to the client’s well-known or famous trademark; (2) the evidence demonstrated that the Respondent had no rights or legitimate interests in the domain name; and (3) the Respondent registered and was using the name in bad faith in violation of the CDRP. Having established these three elements, the panel ordered the domain name be transferred to Complainant.
To view the ruling, click here.
For context on the rarity of CDRP proceedings, Forum has issued more than 33,000 UDRP decisions, while the subject dispute was the latest of just 72 total CDRP decisions to date.
“This victory underscores how effective the CDRP can be for seeking redress against parties that use third-level domain names to infringe on brand owners’ rights,” McArthur said.
Haynes Boone is an international corporate law firm with 18 offices, spanning Texas, New York, California, Charlotte, Chicago, Denver, Washington, D.C., London, Mexico City and Shanghai, providing a full spectrum of legal services in energy, technology, financial services and private equity. With 600 lawyers, Haynes Boone is ranked among the largest U.S.-based firms by The National Law Journal, The American Lawyer and The Lawyer. It was recognized in the BTI Consulting Group’s 2022 “A-Team” report, which identifies the law firms that in-house counsel commend for providing superior client service.
The following publications reported on the matter:
Law360
World Trademark Review
