Remedies for Domain Name Disputes

a. Request Voluntary Transfer -- The first line of defense in domain parking or cyber squatting disputes is to request voluntary transfer of the offending domain name from its owners. Voluntary transfer, or even buying the owner out, may be the easiest and cheapest solution.

b. ICANN Arbitration -- If direct contact with the owner of the site does not resolve the problem, legal aid groups have two potential avenues for recourse: they may initiate a Uniform Dispute Resolution Proceeding with the Internet Corporation for Assigned Names and Numbers (ICANN) or file suit in Federal Court under the Anti-Cyber Squatting Consumer Protection Act.

c. Uniform Dispute Resolution Proceedings -- Over the last several years, the Uniform Dispute Resolution Proceeding (UDRP) has become a fast and relatively inexpensive remedy for disputes over domain names. Fees typically range from $1,000 to $5000 depending on the number of domain names being challenged and number of panelists presiding over the judgment.

Under this process, the legal aid group files a complaint with a UDRP provider. The provider forwards it to the relevant domain name registrar and the owner of the domain name, and establishes a panel to render a decision about the proceeding within 14 days. The owner has 20 days from the beginning of the proceeding to file a response to the complaint. Special circumstances may extend the proceeding, but disputes are typically resolved by 60 days after the initial complaint.

The panel will order transfer of the offending domain name if it is confusingly similar to a trademark or service mark in which the complainant has rights, if the owner has no rights or legitimate interests with respect to the domain name, and if the domain name has been registered in bad faith. Evidence of bad faith includes circumstances indicating that:

• the owner has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name, or

• the owner has intentionally attempted to attract, for commercial gain, Internet users to the web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.

A more in-depth discussion of the UDRP process and evidence of bad faith may be found in Using ICANN’s UDRP, a seminar taught at Harvard Law School’s Berkman Center for Internet and Society between April 21 and April 28, 2000.)

d. Litigation: The Anti-Cyber Squatting Consumer Protection Act
Filing suit under the ACPA is much more expensive and potentially more time consuming than resolving a dispute through ICANN’s UDRP. A legal aid organization should pursue action under the ACPA if it wants to seek remedies over and above the cancellation or transfer of a domain name or it anticipates that a cyber squatter will challenge a UDRP ruling in court.

If found in favor of the plaintiff, an ACPA suit can result in

• the cancellation of a domain name or the transfer of that name to the owner of the trademark

• transfer of the defendant’s profits and payment of actual damages, costs and attorney’s fees, or
• the payment of treble damages.

In lieu of actual damages, the plaintiffs may elect for statutory damages of between $1,000 and $100,000 per domain name (15 U.S.C. § 1117(d)).

Plaintiffs may bring ACPA suit even if the defendant cannot be found, by filing an “in rem” suit against the domain name. This kind of suit can result in the cancellation or transfer of the domain, but monetary damages are not available in the absence of a defendant. Because an “in rem” suit provides the same remedies as a UDRP action, it may be easier and less expensive to pursue the latter.

e. Pursue Disciplinary Action through a Bar Association.

In cases where an entity has inappropriately used your domain name to lead users to an individual lawyer or a law firm, your organization may be able to pursue disciplinary action against that lawyer or firm through their state bar. Bar associations have ethical rules that forbid lawyers from benefiting when third parties engage in activity on their behalf that the lawyer could not engage in directly. For example:

• FL Rule 4-7.10(b) a lawyer who accepts referrals from a lawyer referral service is responsible for ensuring that any advertisements used by the service comply with the requirements of the Rules.

• TX 7. 4 (p) a lawyer who advertises in the public media as part of an advertising cooperative or venture shall be individually responsible for: (1) ensuring that each advertisement does not violate this Rule...
• ABA Model Rule 8.4 (a) it is professional misconduct to violate the Rules through the acts of another.

State ethics opinions have clarified that these rules apply to Internet advertising even when the Internet is not specifically mentioned in the rule.

Potential breaches to pursue include:

• ABA Model Rule 7.5 (a): A trade name may be used by a lawyer in private practice if it does not imply a connection with a public or charitable legal services organization.

• ABA Model Rule 7.1: A lawyer shall not make a false or misleading communication about the lawyer or the lawyer’s services… (Most states prohibit the creation of “unjustified expectations” and “unsubstantiated comparisons”)

• ABA Model Rule 7.2 (b): A lawyer shall not give anything of value for the recommendation of the lawyer’s services, except for the reasonable costs of advertising or the usual changes of a state-qualified or non-profit lawyer referral service or legal service plan. (Other 7.2 limitations may also apply. Look at the cumulative effect for multi-state entities - disclaimers, limits on dramatizations, limits on stock photos, retention/filing/ screening requirements.)
• ABA Model Rules 8.4 (c) and (d) prohibit deception or misrepresentation and conduct detrimental to the legal profession.

Possible outcomes from filing a complaint may include a cease and desist letter or "Ask Gary" style sanctions, in which lawyers may face disciplinary action because they acquired clients through advertising that is prohibited.

[Material in section e has been extracted from Will Hornsby's presentation, "Who's Got Your Name?" which was delivered at the NLADA Annual Meeting on November 8, 2007. The PowerPoint may be found here.]