IP Essentials: Q&A Series

Q What constitutes bad faith in a UDRP proceeding? A A number of factors are considered in determining whether a domain was registered and is being used in bad faith, including: 1. Attempting to impersonate another brand; 2. Registering a domain incorporating a brand name in order to direct traffic to that brand’s competitors; 3. Providing false information when registering the domain; and 4. Registering a brand-related domain with the intent to sell it to the brand owner or its competitor for a profit. Q What can I do if someone has registered a domain incorporating my brand name to criticize my business? A It may be possible to take action against the domain and/ or its owner if the content is false or misleading, suggests a legitimate affiliation with you or your company (such as by incorporating your logo), or is being done for a commercial purpose (such as to steer visitors to a competitor’s website). If the claims made on the website (or in the domain) are true (or cannot be proven false), or are simply a statement of opinion, the registrant may be protected on the grounds of free speech. A legitimate parody or other social commentary may also be protected.

Q What is a privacy service and what are the advantages and disadvantages to using one? A Typically, registering a domain name requires you to provide identifying information which is made public such as your name, address, and email address. A privacy service may be used for a small fee to register your domain

“Registering a domain name does not by it- self create any trademark rights. However, using your trademark for commerce... may create com- mon law rights that protect your trademark.”

name using an intermediary in order to conceal your real identity. While the advantages of this privacy are obvious, it is worth noting that using a privacy service (or worse, providing false information) may be viewed as evidence of bad faith in a UDRP proceeding. Q Does registering <mybrand>.com protect my brand name as a trademark? A Not necessarily. Registering a domain name does not by itself create any trademark rights. However, using your trademark for commerce—which includes in the content of a website— may create common law rights that protect your trademark.




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