The three elements

Paragraph 4(a) of the UDRP requires a complainant to prove three things. A panel that is not satisfied on any one of them refuses the complaint, regardless of how strong the other two are.

1. Identical or confusingly similar to a mark in which you have rights

The lowest hurdle. You show you own a trademark, then compare it to the domain.

Registered rights anywhere in the world will do. The registration does not have to be in the registrant's country, and it does not have to predate the domain for this element, though timing matters a great deal for the third.

Unregistered rights can work, but you have to evidence genuine reputation: sales figures, advertising spend, press coverage, length of use. Panels apply this strictly and a bare assertion of common law rights usually fails.

The comparison itself is a straight side-by-side of the mark and the domain string. The top-level extension is normally disregarded. Added generic or geographic words rarely avoid confusing similarity, so yourbrand-shop.com and yourbrandireland.com both generally satisfy this element. Deliberate misspellings do too.

2. No rights or legitimate interests

This is where most complaints fail. You are proving a negative, so panels require you to make out a prima facie case, after which the burden shifts to the registrant to show they do have a legitimate interest.

Paragraph 4(c) lists what counts, and it is not exhaustive:

• Use, or demonstrable preparation to use, the domain for a genuine offering of goods or services before any notice of the dispute
• Being commonly known by that name, as an individual or a business, even without a trademark
• Legitimate non-commercial or fair use, without intent for commercial gain and without misleading consumers

A registrant who genuinely trades under the name will usually defeat the complaint. So will a critic running a real gripe site in many cases, and a reseller who meets the conditions panels have developed for authorised and unauthorised resellers.

To make out the prima facie case you need to show the things that are true: no trademark of their own, no business under that name, no content beyond a parking page, no relationship with you that would justify the registration.

3. Registered and used in bad faith

Both. This is written conjunctively and panels apply it that way.

Paragraph 4(b) gives four non-exhaustive examples: registering primarily to sell the domain to the trademark owner or a competitor for more than out-of-pocket costs; a pattern of registering domains to block trademark owners; registering primarily to disrupt a competitor's business; and using the domain to attract users for commercial gain by creating confusion with your mark.

The timing point defeats otherwise strong cases. If the domain was registered before your trademark rights came into existence, the registrant cannot have been targeting your mark. There are narrow exceptions where a filing was clearly anticipated, but the general rule holds.

Passive holding can amount to bad faith use, following the reasoning in the 2000 decision in Telstra Corporation Limited v. Nuclear Marshmallows. A domain that does nothing at all is not automatically safe from a complaint, where the mark is well known and no plausible good faith use exists.

More on what panels treat as bad faith.

What it looks like when one element fails

The commonest way a strong-looking complaint is lost is timing. The domain was registered before the trademark rights existed, so the registrant cannot have been targeting them.

Reverse domain name hijacking

If a panel decides you brought the complaint in bad faith, knowing it could not succeed, it can make a finding of reverse domain name hijacking against you. There is no financial penalty, but the decision is published under your company's name and stays there.

This is a real reason to have someone assess the case honestly before filing rather than after.

Next

• How to file a complaint
• Evidence of bad faith
• Responding to a complaint