Domain Name - Legal Interest

Legal issues - UDRP

In order to satisfy one of the three underlying elements in the UDRP assessment, it may be a valid strategy to file for a "legal interest" in high value contestable domain names.

Class 35
Dissemination of advertising for others over a global computer network; advertising services for others over a global computer network, namely, providing advertising space on internet web sites.

This is a useful specification in class 35 to achieve a legal interest (Registered trademark) in a specific URL. If the filing has a large defensive element then the full URL should be filed at the USPTO (USA) or OHIM (EU). It should be noted that URL's themselves may not be an acceptable filing basis in various other jurisdictions i.e. you will need to file the root word. The more your filing moves away from the exact URL, the more likely you are to have examination issues and oppositions.

ICANN three test to be proved at the UDRP

(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii) you have no rights or legitimate interests in respect of the domain name; and

(iii) your domain name has been registered and is being used in bad faith.

In the administrative proceeding, the complainant must prove that each of these three elements are present.


It would appear that a service mark or a state registered trademark should be sufficient to claim a legal interest. Here in the United Kingdom, it is possible to submit a proposed TM application to the UK Patent office (smallish fee) where a premliminary examination will be undertaken, this initial examination if successful is essentially a rubber stamp to say that it will be accepted and there is NO CONFLICTS with anything on the current TM register. (This would invalidate the whole basis for any UDRP on confusingly similar attributes).

Because the turn around time for a prelimiary examination is only 7 working days, a domain holder under threat may wish to purse this as evidence to use in a UDRP action.

It has yet to be seen whether the UDRP will over rule a foreign trademark in favour of a US domestic dispute on a global TLD. Remember, that .US is for the US.


We will build this whole legal section out as more research is done.

Please always note that this is not professional advice, and should be interpreted as potential concepts for good faith domain holders to pursue in order to protect their rights in domain names.

Please refer to your legal advisor where necessary - This does not constitute professional advice Copyright UFO.ORG^TM(c) 2005