A trademark holder that believes that a domain name registration infringes on or dilutes its trademark(s) may initiate proceedings under the UDRP by filing a complaint with one of several approved dispute resolution service providers. The complaint must specify the following:
The domain name in question;
The registrant of the domain name;
The registrar with which the domain name was registered; and
The grounds for the complaint.
The complainant also must establish the following elements:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
2. The registrant has no rights or legitimate interests in respect of the domain name.
3. The registrant registered and is using the domain name in bad faith.
Proving the complainantís rights in a mark under the first element can be accomplished relatively easily if the complainant has obtained a registration for its mark or has well-established common law rights. Proving the remaining portion of the first element then requires an argument that the domain name is identical or confusingly similar to that mark.
The second element can be proven by showing that the registrant had notice of the complainantís mark (e.g., a U.S. domain name registrant had notice of complainantís famous U.S. mark or constructive notice of complainantís federal registration), or made no demonstrable preparations to use the domain name in connection with a bona fide offering of goods or services (e.g., registrant had no website up). This element can also be proven by showing that the registrant has not been commonly known by the disputed portion of the domain name, or has not made a legitimate commercial or fair use of the domain name (e.g., the registrant instead intends to misleadingly divert customers or tarnish the trademark or service mark at issue for commercial gain).
The third element can be shown by evidence similar to that used to establish the second element. For example, if the registrant is not using the domain name in connection with a bona fide commercial enterprise, is using the domain name to misdirect visitors or is trying to sell it for more than out-of-pocket costs, the registrant may be deemed to be using the domain name in bad faith.
Bad faith may be found in the following circumstances (the list is not comprehensive):
The registrant registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant that is the owner of the trademark or service mark, or to a competitor of that complainant, for valuable consideration in excess of the registrantís documented out-of-pocket costs.
The registrant registered the domain name in order to prevent the complainant from using the mark in a corresponding domain name, provided the registrant has engaged in a pattern of such conduct.
The registrant registered the domain name primarily for the purpose of disrupting the business of a competitor.
By using the domain name, the registrant intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the complainantís mark.