How Can Clients Recover Domain Names that Infringe On their Trademarks?


    How Can Clients Recover Domain Names that Infringe On their Trademarks?

    When it comes to reclaiming a domain name that infringes on a trademark, strategies can range from the legal expertise of a Trademark Attorney to monitoring expired domain auctions for opportunities. Our Trademark Attorney kicks off the discussion by highlighting the effectiveness of using legal instruments for recovery. Alongside this expert approach, we've gathered five additional answers that provide a spectrum of strategies for protecting a client's brand identity online.

    • Use Legal Instruments for Recovery
    • Initiate Amicable Negotiations
    • Employ a Domain Broker Service
    • Send a Cease and Desist Letter
    • Opt for Alternative Dispute Resolution
    • Monitor Expired Domain Auctions

    Use Legal Instruments for Recovery

    I have assisted several clients in recovering domain names that incorporated their protected trademarks or contained terms that are confusingly similar. While I cannot go into detail, given my legal and ethical obligations, I can share the process. There are two legal instruments you can use to transfer a domain name: (1) the Anti-Cybersquatting Consumer Protection Act ("ACPA"), or (2) the Uniform Domain-Name Dispute-Resolution Policy ("UDRP"). The ACPA is a federal statute that can be enforced through normal federal litigation procedures. The UDRP, on the other hand, is a dispute resolution forum under ICANN, which controls website registrars (e.g., GoDaddy,, etc.). I've helped clients utilize both the ACPA and UDRP to acquire domain names that are confusingly similar to their trademarks. In one instance, I filed a UDRP complaint to recover a domain name that incorporated my client's U.S. registered trademark in its entirety. The owner of the domain name had previously attempted to ransom the domain to my client, which we highlighted to the panel in our UDRP complaint. The domain name also had no standing website and was solely acquired to attempt to ransom the domain name off to my client or another interested buyer at an unreasonable price. Within 60 days of filing, the panel ordered the domain name to be transferred to my client.

    Caleb Green
    Caleb GreenTrademark Attorney, Dickinson Wright PLLC

    Initiate Amicable Negotiations

    Clients looking to reclaim domain names that infringe on their trademarks can start by reaching out directly to the individual or entity that currently holds the domain. This initial contact could open up a dialogue where both parties come to a mutual understanding and possibly negotiate a transfer of the domain name. The process would typically involve discussing terms that could include compensation or other conditions favorable to both sides.

    It is crucial for clients to maintain a professional tone during these negotiations to encourage a positive outcome. Those facing this issue should consider contacting the current registrant to explore if a resolution can be reached amicably.

    Employ a Domain Broker Service

    Utilizing the expertise of a domain broker service can provide clients with a strategic advantage when trying to recover domain names that tread on their trademarks. These services specialize in the acquisition of domain names and can navigate the complexities of the domain market on behalf of their clients. With a deep understanding of valuation and negotiation techniques, brokers may substantially increase the chances of retrieving the domain name.

    They can also provide anonymity for clients, which is often desirable during negotiations. Businesses and individuals facing such trademark infringements should reach out to a reputable domain broker service to discuss their recovery options.

    Send a Cease and Desist Letter

    In situations where domain names infringe upon trademarks, filing a cease and desist letter represents a formal approach toward resolving the issue. This legal document alerts the registrant of the infringement and demands the immediate cessation of the domain name's usage. By clearly stating the legal grounds of the trademark ownership and the consequences of continued infringement, this action can provide a compelling incentive for the domain owner to comply.

    These letters often serve as a prelude to further legal action if the issue is not resolved. It is advisable for trademark holders to consult with an attorney to draft and send a cease and desist letter, laying the groundwork for legal recourse if necessary.

    Opt for Alternative Dispute Resolution

    Engaging in alternative dispute resolution (ADR) can be a pragmatic and often faster method for clients to address the infringement of their trademarks through unauthorized domain names. ADR encompasses various techniques such as mediation or arbitration, allowing both parties to come together in a neutral environment to work out a solution. With the help of a third-party facilitator, clients can outline their legal stance and strive to reach an agreement that respects their trademark rights.

    This process can be less adversarial and more cost-effective than taking legal action through the courts. Clients should consider ADR as a viable option and seek an experienced mediator or arbitrator specialized in intellectual property disputes.

    Monitor Expired Domain Auctions

    Monitoring auctions for expired domains is another route clients can take when dealing with infringements on their trademarks. Since not all domain registrations are renewed, a domain infringing on a trademark might eventually expire, providing an opportunity for clients to acquire it legally through an auction. Keeping an eye on these auctions enables clients to act quickly when a desired domain becomes available.

    Auction platforms typically offer tools to track and alert users about upcoming domain expirations. Individuals looking to reclaim their trademark rights should set up notifications on auction sites to ensure they do not miss the opportunity to purchase the domain when it comes up for auction.