Protect Your Brand by Protecting Your Domain Name.

I won a case at WIPO last week. A link to the decision, in case you're curious, is here.

I was quite proud of myself. A goliath company was trying to wrest a domain name out of my client's hands and they lost. Because they were wrong. And what I realized when I started telling people that I had won at WIPO was that people had no idea what I was talking about.

People were completely unaware that there is a mechanism to challenge domain name registrations. Were you?

So why would you need such a thing?

Let's say you weren't fast enough. Let's say you've got a business and a competitor has started buying up versions of your domain name.

Worse yet, he's put a site up that looks confusingly like yours and directs people to his competing site.

What can you do? I mean other than tearing your hair out, of course.

Are you just out of luck?

Actually, no. You've got options.

You could ask your competitor to give you the domain name. But that's not very likely.

But you have another option.

Have you ever heard of WIPO? If not, don't worry, you're not alone. Many people haven't.

Ok, this is going to get confusing for a second, because it's a bit of an alphabet soup, but bear with me...

WIPO(the World Intellectual Property Organization) is the international body charged with resolving domain name disputes over global TLDs (or Top Level Domains (e.g., .com, .net, .biz, .info, .mobi, .org). By following the UDRP (Uniform Dispute Resolution Policy) and the supplemental rules, panels of one to three international arbitrators decide whether the domain should remain with the party that registered it or should be transferred to the complaining party.

Did you understand that? Don't worry, you're not alone.

What you need to understand is that WIPO is where you go when you need to challenge a domain name registration. And the UDRP (and supplemental rules) give you the formula to determine whether you have a valid claim.

The domain name dispute procedure is only available to resolve disputes that concern an "alleged abusive registration of a domain name". The criteria to determine whether the domain name has been registered abusively under Section 4(a) of the UDRP are:

(i) the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and

(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and

(iii) the domain name has been registered and is being used in bad faith (examples of which are set out in Section 4(b)).

All three elements must be met to win at WIPO. If you can prove all three, the domain name will be ordered to be transferred to you.

Pretty cool, no?

It's also important to remember that if you are on the other side as a Respondent and someone brings an action against you at WIPO, you shouldn't necessarily capitulate to their threat. Some companies use threats of WIPO action (or even filing WIPO actions) as a ploy to get you to turn over your URL.

If you're in the right, hire someone who knows what they're doing and fight. Because it's not like a regular court case, the cost of doing so is far less than it would be in court.

Don't ever forget to protect your brand. Protecting your domain name is a big part of that.