Someone Has Copied My Website, What Can I Do?

A domain name is a piece of intellectual property. If someone has registered and is using a domain name that is confusingly similar to your own, you may be able to gain control of that domain through a quick and simple arbitration process.

As internet marketing becomes more popular businesses face increasing threats on the web. Common problems include domain names that are misspellings of the company's domain or similar enough that users looking for your company end up on a competitor's site by mistake. Some cyber-pirates design websites that mimic a company's site in a way that confuses users and causes them to believe the infringer is associated with the company in an attempt to siphon off potential customers. Another problem is discovering a site with a similar domain name that is designed to disparage your business.

The quasi-private authority which controls ownership of all domain names is called the Internet Corporation for Assigned Names and Numbers (ICANN). ICANN provides a simple procedure for resolving disputes related to abusive behavior. To initiate the arbitration proceeding one files a Uniform Domain Name Dispute Resolution Policy Complaint, UDRP for short.

What are the types of disputes that a UDRP complaint can resolve?

The complainant must assert that the party controlling the abusive website (called the respondent) has:

(a) a domain name that is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(b) that the respondent has no rights or legitimate interests in respect of the domain name; and

(c) the respondent's domain name has been registered and is being used in bad faith.

What is evidence of bad faith?

The following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:

(a) circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent's documented out-of-pocket costs directly related to the domain name; or

(b) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or

(c) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(d) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent's web site or location or of a product or service on the respondent's web site or location.

What does it cost to file the UDRP complaint, and what happens after the complaint is filed?

The filing fee to file this complaint is currently $1,300 for a single-member panel and $2,600 for a three-member panel. In my opinion a single arbitrator will do. The fees increase if more than one domain name is in dispute. You can prepare the complaint yourself, but its better to have an attorney familiar with domain name disputes and trademark law advise you and draft the document. Attorney's fees vary, but the cost should be modest. This is money well spent because a confusingly similar site can result in lost business and damage to your company's reputation.

The respondent has thirty days to answer the complaint. Often the respondent will not answer, in which case the complainant usually wins by default. If the respondent does answer, the complainant has five days to submit any additional relevant materials, and the respondent then has five days to make a final submission. The complainant and respondent engage in a process of selecting and disqualifying panelists. A final decision by the panel is rendered within fourteen days of the final submission by the respondent. The decisions of the arbitration forum's panel can be appealed to a federal district court within ten days of the arbitration forum's final decision, but are usually not appealed by either party.

If some one has put up a site that is designed to disparage yours or to siphon off customers, then filing a UDRP complaint may be the way to go.

1 comments:

Unknown said...

Interesting article, thank you.
Unfortunately, if you have a 'generic' domain name, the Australian domain name authority (auDA) don't seem to care.
i.e, if you have melbournecarparts.com.au, they would be fine with melbournecarpart.com.au, for example.
Its ridiculous, as other parts of the rules specifically state that pluralisation or singularisation of existing domains in not allowed.

Furthermore, they don't seem to care that a .com.au domain is meant to be related to your business name - eg, "Melbourne Car Parts" could legitimately register melbournecarparts.com.au, but so could "Brisbane Car Parts", or for that matter, pretty much any business name.

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