By Marco Tena
In the digital age, domain names are as valuable as traditional brands. They are often the first point of contact between a company and its customers. But what happens when a third party registers a domain name that is identical or confusingly similar to your trademark?
In these cases, the World Intellectual Property Organization (WIPO) offers an effective mechanism for domain name recovery through an adversarial procedure known as the Uniform Domain Name Dispute Resolution Policy (UDRP). In this article, we explain how the WIPO procedure works, the essential documents you need to support your claim and why it is crucial to protect your trademark when used with a .mx domain.
The WIPO adversarial procedure, or UDRP, is a specialized mechanism for resolving disputes between trademark owners and the holder of a domain name when the latter has been registered or is being used in bad faith. It applies when the disputed domain name is identical or confusingly similar to a trademark registered by the complainant.
The process is faster and less expensive than traditional litigation, making it an attractive option for companies seeking to recover domain names.
This procedure is particularly relevant in cases involving .mx domains (the country code top level domain for Mexico), where a third party may have registered a domain name to take advantage of the reputation of a Mexican trademark or to cause confusion among consumers.
To initiate the process, the first step is to file a complaint with WIPO, detailing how the domain name infringes your trademark rights. The complaint must clearly state three main elements: that the domain name is identical or confusingly similar to your trademark, that the current owner of the domain name has no rights or legitimate interests in the domain name, and that the domain name has been registered or is being used in bad faith. Bad faith can be demonstrated in a number of ways, such as showing that the domain name was registered to sell to the trademark owner at an inflated price, is being used to divert traffic to a competing business, or is intentionally damaging the reputation of the trademark.
Once the complaint is filed, the domain owner has 20 days to respond, providing evidence to counter the complainant’s claims. The burden of proof then falls on the complainant, who must present convincing evidence to support its arguments. After reviewing the evidence submitted by both parties, a panel composed of one to three experts will issue a decision, usually within 60 days. If the decision favors the complainant, the domain name will be transferred to the trademark holder or cancelled, as requested in the complaint.
When WIPO rules in favor of the complainant, the domain name recovery and reassignment process involves several key steps. First, WIPO notifies both parties (the complainant and the respondent), as well as the domain name registrar, of the resolution. The registrar is the entity responsible for managing the technical configuration and registration details of the domain. After the decision is communicated, there is a 10-day waiting period during which the losing party may challenge the decision by filing a lawsuit in a competent court. If no legal action is taken within this period, the registrar is obliged to implement the decision.
If the panel orders a transfer, the registrar will modify the ownership details of the domain name and transfer it to the complainant. This process includes updating the registry records to reflect the complainant as the new owner of the domain and providing access to the domain’s management settings. If the panel orders cancellation, the registrar will remove the domain name from its active registry, making it available for a new registration, unless otherwise specified in the decision. Once the domain name has been transferred, the complainant can now control and manage the domain as its rightful owner, allowing you to use the domain for your business, redirect traffic to your main website, or protect it against future infringement.
To ensure a successful claim, the claimant must present key documents that support its position. It is crucial to have a certificate of trademark registration in Mexico or another applicable jurisdiction to demonstrate rights to the mark. Evidence of use of the mark in commerce, such as advertising material, official websites and catalogs, must also be submitted. In addition, the complainant must provide evidence showing that the domain name owner has acted in bad faith, such as correspondence in which the owner attempts to sell the domain name at an inflated price or examples of use of the domain name that divert traffic to a competing site or damage the reputation of the mark. Documents demonstrating that the domain name holder has no legitimate rights in the domain name are also valuable, such as evidence that the domain name holder does not offer goods or services that justify use of the domain name.
The WIPO procedure is especially relevant when dealing with .mx domains, as these are regulated by specific policies of NIC Mexico. In many cases, Mexican companies discover that third parties have registered domains with their commercial name in order to mislead customers or benefit from their reputation. This practice, known as “cybersquatting”, can be particularly harmful when the domain name is used to offer similar products or services that generate confusion among consumers. The adversarial procedure before WIPO allows Mexican trademark owners to recover these domain names in an efficient manner, without the need to go to court, saving significant time and legal costs.
The WIPO adversarial procedure is an effective tool to protect your trademark and ensure that domain names on the Internet are not misused. Having the proper documentation and demonstrating compliance with the established requirements is crucial to ensure a favorable decision. If your trademark is being used in an unauthorized manner with a .mx domain name, this procedure is essential to restore your rights and maintain your brand’s reputation.
For more information or to file a domain recovery complaint, do not hesitate to contact our legal team specialized in intellectual property and domain recovery.
