Preparing UDRP Complaints: Determining Registrant Rights, Providing Evidentiary Support of Bad Faith Registration and Use

Description

To increase a complainant’s likelihood of success, it is important to have a strong UDRP complaint and support the factual arguments asserted. To obtain relief under ICANN a complainant must prove: (1) the domain name is registered by the respondent and is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) the respondent has no legitimate interest in the domain name; and (3) the domain name has been registered and used in bad faith.

For example, Chris Pearson, creator of the “Thesis” WordPress theme, filed a UDRP compliant against Automattic, the company that held the domain name Pearson sought. While Pearson demonstrated that the domain name was identical or confusingly similar to his trademark and that Automattic did not have rights or interest in the domain name, he failed to provide evidence that Automattic registered and used the domain name in bad faith.

Several factors should be considered when preparing a UDRP complaint, including interests in a domain name, non-commercial or fair use, pattern of conduct, demonstrating disruption of competitor's business, and more.

Listen as our authoritative panel of trademark attorneys examines the issues trademark owners and their counsel should consider when preparing a UDRP complaint, including analyzing confusion, bona fide offerings, fair use, and bad faith registration and use. The panel will offer best practices for maximizing success when filing UDRP complaints.