There are several alternatives to protect a trademark registration. Thus, it is important to determine the best tool for each case. When the infringement comes from a domain name, the best instrument is the Uniform Domain-Name Dispute-Resolution Policy (UDRP) issued by the Internet Corporation for Assigned Names and Numbers (ICANN).
The UDRP applies to all generic top level domains, like .com, or .org, among others, some country code top-level domains, like .co, and all new generic top-level domains, like .top or .xyz, among others.
However, the evidence is crucial. According to the Policy, Complainant must prove the confusing similarity between the trademark and the domain name, the lack of Respondent’s rights or legitimate interest in the domain name and the bad faith registration and use. Failure to prove any of these elements would deem the claim unsuccessful.
In our most recent case, we assisted the Colombian company Xtralife Colombia S.A.S., in defending its domain name from a claim filed by a company with domicile in the United States of America.
Despite the fact that Complainant’s trademark and our client’s domain name were confusingly similar, Complainant was not able to prove the lack of rights or legitimate interest of our client. In fact, we filed enough evidence demonstrating that our client was the rightful and incontestable owner of the trademark in Colombia. Hence, the case was resolved in our favor.
UDRP are expedite proceedings; nonetheless, the evidence should be strong enough for the case to be successful.
If you have a trademark infringement, we are available to assist you: tum@tumnet.com
Contact TRIANA, URIBE & MICHELSEN
If you seek protection for your trademarks and intangible property, contact us at our email: tum@tumnet.com
Visit www.tumnet.com