Ten Tips for Avoiding or Resolving Domain Name Disputes *

1. Avoid a Conflict by choosing a common, generic term and/or checking the status of any possible conflicting trademark registrations at the US Patent and Trademark Office.

Generic terms, such as business, cars, tools, etc. are not protectable under trademark law.  Therefore, the safest approach to avoiding a domain name conflict is to choose a generic term.  Because such terms are becoming scarce, other domain names are often selected.  Before registering or using the candidate domain name, conduct a preliminary search at the US Patent and Trademark Office Web Site.

2. If the domain name does not appear as a registered trademark or a pending application, consider filing an Intent to Use Trademark Application to reserve the right to use the domain name and the trademark for your intended use.

By filing an Intent to Use Trademark Application, you can preserve whatever trademark rights you are entitled to as of the time the application is filed.  This can help to avoid the expense of a domain name dispute.  If you do not have a trademark registration for a mark that you are using, you should obtain a registration that can be used as a basis for an ICANN or a federal legal action.

3. If you want to use a Domain name that is already registered, look up the domain name at the WHOIS record to determine if it is scheduled for renewal.

Domain names are registered and renewed for one or two year periods. 

If not renewed, they will become available for registration and you can avoid a conflict altogether by registering the non-renewed domain name.

Because many people have purchased many domain names, it has become a financial burden to some to maintain their domain name inventory.  As a result, it is quite possible that a domain name that has not been sold, will not be renewed by the registrant.

 4. If you are the Registrant of a Public Protest type domain name, such as for example, lucentsucks.com, and are sued by the trademark owner, consider defending the case in Federal Court instead of with the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP).

 Cases tried at the Federal District Court have ruled in favor of the public protest domain names while the cases brought under the UDRP have not. See Lucent Technologies Summary.

 5. If you are a trademark owner with a strong case and want to challenge the registrant of a domain name, consider using the UDRP instead of taking the matter to a Federal Court.

 The UDRP involves the resolution of the dispute by 1 or 3 arbitrators.  The cost to file the dispute is currently $750- $1000 and the total cost, including attorneys’ fees can be as low as $5000.

 If the complainant prevails, the UDRP panel instructs the domain registrar to transfer the disputed domain name to the complainant.

 6. If you are the complainant or the domain name registrant, involved in an ICANN proceeding, put your best foot forward in the initial pleading.

 Unlike in Federal Litigation, under the UDRP, you do not have normally an opportunity to amend or supplement your pleadings after the initial submission.

 7. If you are a trademark owner and do not have an "airtight" case against the domain name registrant, consider taking the matter to Federal Court first, instead of using the UDRP.

 If the losing registrant to an UDRP proceeding files a Federal Action, the disputed domain name will be placed in status quo and will not be transferred unless the outcome of the litigation is favorable to the trademark owner.

 If the case is first brought to an UDRP proceeding, the cost will include both the cost of Arbitration as well as Litigation

 8. If you are a trademark owner preparing to litigate under the Anticybersquatting Consumer Protection Act (ACPA), notify the domain name registrant well in advance of filing the complaint and notify them by a correctable form of mail.

 The notice to the registrant should include “address correction requested” on a first class or certified mail.  Federal Express and most other courier services do not provide address corrections for the shipper as a matter of course.

 Give registrant at least four weeks to respond before filing a federal complaint.  See Lucent Technologies Summary.

 9. If you are a domain name registrant, avoid the bad faith factors to the extent possible as outlined in the ACPA:

1. Do not offer to sell the domain name to a trademark owner, if the trademark owner owns a mark that is similar or identical to the domain name. 

2. Maintain accurate contact and address information with the WHOIS registration service.

3. If you aware of the potential for confusion with a registered trademark, use the domain for non-competing goods or services.  Obviously, this may not be effective if the trademark owner owns a “famous” trademark.

10. As usual, seek knowledgeable counsel to represent you before a dispute arises and certainly if a dispute is imminent.

This law firm is located in Alexandria, Virginia, home of the Federal District Court for the Eastern District of Virginia, and the district in which Network Solutions is located.  We have experience with counseling on trademark matters, as well as resolving domain name disputes through both negotiation as well as federal litigation. See Litigation Summary.  Moreover, having a background in computer programming and an early presence on the Internet, we are adept at the current issues in computer and Internet technology.

*  These Tips are necessarily general in nature and should not serve as a substitute for legal  advice of counsel.  The tips are based on experience and practice, but remain the opinion of the author.  Furthermore, as Internet technology and the law that applies to the Internet evolve, these Tips may be revised at any time.

** For further information or assistance, please contact

James W. Pravel at Pravel Intellectual Property Law, P.C.