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Protecting Domain Names and Trademarks
Client's Business Objective:
The client, a U.S. medical device company, had discovered that a foreign company based in Turkey had copied its web site and was using a domain name almost identical to its own registered trademark, potentially confusing and misleading customers. The client sought to prevent the foreign company from using the domain names.
The Challenge:
The foreign company had no U.S. operations and was not subject to the jurisdiction of U.S. courts. Thus it was potentially costly and time-consuming to pursue the case through traditional litigation.
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What We Did:
Our litigation and trademark attorneys decided that the client would be best served by pursuing a remedy from the National Arbitration Forum (NAF). The NAF is one of two entities empowered to examine and resolve issues involving alleged bad faith use of established domain names worldwide pursuant to the Uniform Domain-name Dispute Resolution Policy (UDRP). We verified the identity of the party using the deceptively similar domain names, tracked it down, and summoned it to defend its use of those names before the NAF.
Results:
In fewer than 90 days, the NAF issued a decision ordering transfer of all domain name registrations and rights in controversy to our client without the need for a discovery process or formal hearing.
Key Takeaways:
When a quick and inexpensive remedy is desired, consider utilizing alternate dispute resolution avenues before entering into litigation. Attorneys with experience in executing UDRP alternative resolutions can help protect valuable company trademarks.