Latimer LeVay Fyock, LLCLatimer LeVay Fyock, LLC

Domain Name Disputes: A Unique Resolution System Marks Its 25th Anniversary in Switzerland With LLF's Colin O'Brien in Attendance

For any business with an internet presence, which means pretty much every business, its domain name is one of its most valuable intellectual property assets. It is a key part of a company’s brand and trademarks, it can be where it generates most of its revenue, and it is the virtual front door through which it welcomes and interacts with customers and clients. So, when an abusive domain name registration by a competitor or other bad actor infringes on a business’s rights to its online address, it can have a devastating impact if quick and decisive action isn’t taken to address and resolve the issue.

A quarter-century ago, a unique and innovative framework was established to govern domain name disputes, a system that is distinct from the way other types of intellectual property disputes are resolved. Unlike claims for trademark, copyright, or patent infringement, which are typically brought in civil lawsuits in federal court, domain disputes are subject to the rules and procedures set forth in the Uniform Doman Name Dispute Resolution Policy (UDRP).

The UDRP was introduced by the World Intellectual Property Organization’s (WIPO) Internet Corporation for Assigned Names and Numbers (ICANN) in 1999. It was developed to address the then-novel but growing problems arising from parties registering domain names that contained well-known trademarks or similar variations, often demanding high fees for their transfer. This practice, known as cybersquatting, created the need for an efficient, cost-effective dispute resolution mechanism.

LLF’s O’Brien is One of Only 400 Attorneys Worldwide and one of 93 in the United States Designated as a Domain Name Panelist

On April 23, 2025, WIPO will mark the UDRP’s 25th anniversary with a conference in Geneva, Switzerland, that will bring together internet stakeholders to share and exchange their inputs and experiences. One of those stakeholders is Latimer LeVay Fyock partner Colin T.J. O’Brien. WIPO has selected O’Brien to be a Domain Name Panelist, one of only 400 attorneys in the world with this prestigious distinction. Panelists are charged with resolving disputes between parties under the UDRP framework. They come from all regions of the world and are relied on for their impartiality, sound judgment, and experience as decision-makers, as well as their expertise with trademarks, domain names, electronic commerce, and internet-related issues.

O’Brien has extensive experience litigating UDRP actions and has assisted in the drafting of over 100 UDRP complaints which resulted in decisions. He has also worked on the preparation of new generic top-level domains (gTLDs), participated in numerous lawsuits related to Anti-cybersquatting Protection Act claims, and has spoken extensively on domain name issues, online enforcement, and trademark protection at DePaul University College of Law, Loyola University Chicago School of Law, the American Intellectual Property Law Association, the Intellectual Property Law Association of Chicago, the Illinois Paralegal Association, the Illinois State Bar Association, and the Chicago Bar Association.

The UDRP: Not Your Typical IP Infringement Claim

The immersive subject matter knowledge and experience O’Brien brings to domain name disputes makes him uniquely well-equipped to protect and advance the interests of businesses facing potentially catastrophic damage relating to their internet presence. Even seasoned intellectual property practitioners may be unfamiliar with UDRP policies and procedures, which, as noted, are wholly distinct from other types of infringement claims.

Under the UDRP, a trademark owner can file a complaint with an approved dispute resolution provider – not a court - if they believe a domain name has been registered and is being used in bad faith. The complainant must demonstrate that:

  • The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights. This means that if a domain name contains a well-known brand name, the trademark holder has grounds to file a complaint.
  • The registrant has no legitimate rights or interests in the domain name. The domain owner must show that they are using the domain for legitimate business purposes, such as a fan site or a generic term that happens to resemble a trademark.
  • The domain name was registered and is being used in bad faith. Bad faith can include attempts to sell the domain to the trademark holder at an inflated price, using the domain to confuse consumers, or disrupting a competitor’s business.

The UDRP process starts when a trademark owner files a complaint with an ICANN-accredited dispute resolution provider, including WIPO. The domain registrant receives notice and is given a chance to respond. A panel of one or more experts, such as O’Brien, reviews the case and makes a decision within about two months. If the panel rules in favor of the complainant, the domain is either transferred or canceled. If the registrant wins, they retain control of the domain.

If you have questions or concerns relating to your business’s domain name or believe that another party is infringing on your rights, please contact Colin T.J. O’Brien, John Ambrogi, or your contact at Latimer LeVay Fyock.