With the widespread availability of domain registration and hosting services and the advent of low-cost generative artificial intelligence (“AI”) software, the creation of fraudulent websites has never been easier—or more convincing. With little more effort than a few prompts of an AI program, scammers are able to quickly set up seemingly legitimate websites with text, images, and even video that can look and sound like the real thing. Online consumers, even those savvy enough to recognize your typical email phishing scam, may be fooled by professional-looking websites imitating existing businesses and organizations for less than savory reasons.
For brand owners, the consequences of these imitators can be myriad, including a loss of brand control, irate consumers looking for someone to blame, and ultimately a hit to your bottom line. Indeed, according to the FBI’s 2023 Internet Crime Report, Americans reported over $7.5 billion in losses stemming from intellectual property-related cybercrimes in 2023, up from 2022. Adding to this problem is the fact enforcing your rights against scammer sites can be costly and time-consuming. Scammers themselves are often anonymous and unsurprisingly unlikely to make themselves readily identifiable or easy to track down. Domain registrars and web hosts may require brand owners to navigate byzantine reporting channels in order to flag problematic conduct. And the resources required attempting to litigate every offending domain in court can make it an untenable option for many.
Ironically, the extent to which many of these scam sites go to in order to imitate a brand can also open the door to a relatively fast, reliable, and affordable solution: a proceeding brought under the Uniform Domain Name Dispute Policy (“UDRP”). Created by the Internet Corporation for Assigned Names and Numbers (“ICANN”) and adopted by most domain registration agreements, UDRP proceedings allow brand owners to enforce their rights against domain names that make the identical or confusingly use of their marks. Specifically, proceedings can be brought against the registrants of domain names that use “top level domains” or “TLDs”—colloquially referred to as domain name extensions—that are subject to the UDRP. This not only includes common “generic” TLDs, such as .com or .org, but many “country code” TLDs, such as .br for Brazil or .pl for Poland. Under Paragraph 4(a) of the UDRP, a complainant has to show that in addition to (1) the identical or confusingly similar use of their mark, a defendant registrant; (2) has no rights or legitimate interests in the domain name; and (3) has registered and used the domain name in bad faith. A successful proceeding typically then results in the transfer of the domain name by the defendant’s registrar to the complainant.
Although these proceedings require a brand owner to put forth evidence establishing their trademark rights, as well as a defendant’s actionable conduct, they can quickly put scammers on the defensive. Registrars accredited through ICANN are required to comply with UDRP proceedings, and this includes providing additional information on registrants who have used privacy shielding services to mask their identities. Conduct used to carry out their scams—such as providing fake registrant contact information or using the site associated with the domain name to pose as the complainant—can all boomerang back against the registrant as evidence of bad faith conduct involving no legitimate right or interest in using the complainant’s mark. The registrants themselves are then required to respond to the complaints or face a default and the loss of their domain. Unsurprisingly, given the inherently unscrupulous nature of a scam website, many of their registrants opt for the latter. Consequently, whereas trademark litigation can often stretch out for years, a typical UDRP proceeding can lead to a favorable outcome in a matter of weeks…at a fraction of the cost.
If you think a UDRP proceeding may be in your future, here are some tips to consider:
- Ask whether a UDRP proceeding is the appropriate channel: A crucial component of a UDRP proceeding is the use of another’s mark in the domain name. The use of a mark on the website is relevant in a proceeding, but it’s not the basis for one. You may also sometimes notice some domain names employ rarer TLDs, such as one for a country that seems unrelated to the actual site itself. While the use of these TLDs may be nothing more than a personal preference, they can also be purposeful attempts to stay outside the reach of a UDRP proceeding by using domain extensions not subject to them. Fortunately, these domains are usually nevertheless governed by similar policies, albeit one that may require the assistance of counsel familiar with their respective processes.
- The use of the mark in the domain name must be in bad faith without any legitimate rights or interests: As with federal litigation, the identical or similar use of one’s mark in a domain name is not an automatic win for a complainant. A registrant may have prior rights in the mark or a legitimate interest in the domain name, such as leveling criticism regarding the brand in question or using the mark in a manner entirely unrelated to the complainant’s use.
- Pictures are worth a thousand words: A UDRP complaint is limited to 5,000 words, which may not always leave complainants with much room to put forth the relevant facts and precedent. This makes collecting and preserving examples of the defendant’s conduct as soon as possible that much more valuable, particularly if the site’s content changes or goes offline during adjudication.
- Protect your brand ahead of time: Registering your mark can pay dividends down the road when it comes to protecting your brand, and UDRP proceedings are no exception. While a registration isn’t a prerequisite to bringing a UDRP proceeding, establishing your existing rights in a mark without one will take that much more time, effort, and space in a complaint that, again, can quickly reach a tight word limit.
For those interested in learning more, the TCAM team at Faegre Drinker regularly assists brand owners in UDRP actions (and, of course, trademark registration).
The material contained in this communication is informational, general in nature and does not constitute legal advice. The material contained in this communication should not be relied upon or used without consulting a lawyer to consider your specific circumstances. This communication was published on the date specified and may not include any changes in the topics, laws, rules or regulations covered. Receipt of this communication does not establish an attorney-client relationship. In some jurisdictions, this communication may be considered attorney advertising.
