Rule 3(c) of the Rules for Uniform Domain Name Dispute Resolution Policy states, “The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.” This means that if a trademark owner’s business is being harmed by multiple unrelated cybersquatters, she must file one complaint against each registrant. What if you have a popular trademark and/or domain name (which usually coincides with a popular product or service) that you believe is being cybersquatted by numerous domain name registrants? Based upon the number of UDRP Complaints that name only one domain, most Complainants, and even their attorneys, believe you have to file one Complaint against each domain name registrant.
This may have been acceptable when the Rules were adopted in 1999, but it is a vastly different cyber-world. Unfortunately, cybersquatting is now rampant and cybersquatters are becoming increasingly sophisticated. For example, cybersquatters can hide their contact information (via private registration) as well as create fictitious entities to hold the domain names. At a minimum of $1,300 per Complaint (not considering attorneys fees), victims of cybersquatting are finding themselves forced to prioritize which domains to pursue. While the UDRP was designed, in part, to create a cost-effective and efficient alternative to litigation under the ACPA, it is becoming increasingly expensive to pursue a UDRP action via the two most popular arbitration providers, WIPO and NAF. In fact, if you are being cybersquatted by more than 10 domain name registrants, it may be cost prohibitive, just like the ACPA is to many individuals and small businesses that own trademarks. As of January 1, 2008, WIPO’s fee schedule costs a minimum of $1,500 while NAF’s is at $1,300. There is no maximum fee either, but rather a fee quote to be provided by the arbitrator when multiple domains are involved.
Only if you are lucky enough (or unlucky enough for that matter) to have multiple domains all registered with the same registrant cybersquatting on you can you escape having to deal with both the administrative and financial burden of filing multiple UDRP Complaints. As such, it is the trademark owner that is being punished by the UDRP Rules. A Complainant must choose which domains to go after and effectively bypass known cybersquatters due to the financial burdens of filing multiple Complaints. Moreover, due to tactics employed by cybersquatters, when filing a Complaint, you may have failed to even name all of the domain names owned by that cybersquatting registrant.
There is hope, however. The fairly unknown and little used provision of NAF’s Supplemental Rules enables the Complainant to file one Complaint even though the domains subject to the Complaint are held by different named Registrants. However, there is a catch. The Complainant must “allege that a single Respondent is using multiple aliases and make such arguments in the Complaint.” If successful, per NAF Supplemental Rule 4(f), the filing fee shall be increased proportionately to the number of aliases involved. Unfortunately, if the Panel disagrees, “the domain names held by the unrelated registrants will not be subject to further consideration by that Panel; no portion of the filing fee will be refunded.”
While NAF provides a mechanism by which a trademark owner can pursue multiple domains at one time despite not positively knowing that the registrants for those domain names are the same, this should not be the preferred solution. Instead, trademark owners need to be able to accurately identify the cybersquatter, and in turn, identify the other domain names owned by the cybersquatter. This is possible now. Some registrars now reveal the identity of registrants, under appropriate circumstances. For example, Pursuant to 3.2(ii) of Dotster, Inc’s PrivacyPost WHOIS Information Agreement, Dotster is to “reveal [the registrant’s] name and personal information that [it] provided to Dotster when requested by a third party.” Dotster is permitted to reveal the registrant’s name and personal information, including any Verifiable Information, in order to, consistent with 3.2(f), “avoid a dispute if the domain name registered allegedly violates or does violate or infringe a third party’s trademark.” If this process works successfully, once the registrant is identified, a trademark owner can use either WIPO or NAF and simply name all those domain names owned by the particular cybersquatter in one Complaint.
Thus, a trademark owner facing numerous cybersquatted domain names should focus her efforts on identifying the registrant. Dotster is an example of a registrar who has decided to work with the trademark owner, despite offering private registration. Knowing the identity of the domain name registrant will surely allow for one Complaint, with no risk of sacrificing a filing fee should the NAF Panel deem the domain names to be held by unrelated registrants. There are now tools that allow identification of domain names by registrant. However, should identification prove to be impossible, know that filing only one UDRP Complaint for multiple domain names is still a possibility.