How do .com proceedings?

Started by zoesmith01, Aug 21, 2022, 04:00 AM

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zoesmith01Topic starter

parties are located in different countries?

I need help understanding the following issue:

There is a common English three-word domain - - that is three years old and has been actively used for a project within the advertising industry. The individual owner of the domain is a French resident.

Recently, an American law firm contacted us to assert that their client owns a trademark containing %word1%%word2% and we have infringed upon their rights. However, their company is not well-known and is relatively small.

While both projects operate within the advertising industry, our platform serves webmasters and freelancers, whereas theirs is geared towards a larger audience, potentially television-related. Thus, there is no significant overlap in clientele.

It should be noted that a separate company owns a trademark for both %word1% and %word2%, which may also have grounds to claim against our company.

Currently, they have requested our address but we have not responded. They have threatened legal action if we do not comply.

I have two questions:
1. What are the chances of losing ownership of our domain?
2. How would such a trial proceed with an overseas owner? Would they be able to appoint a court knowing the owner is unable to appear in-person?


From what I have gathered from the American lawyers, if the defendant or their representative fails to appear in court, the defendant will be found in technical default, with all the accompanying consequences.

A potential solution is to hire a lawyer at the venue of the court online, without physically traveling to the US. Prior to the trial, they are required to serve notice to the other party of the date and location of the hearing.

But beware, the legal process can become prolonged and costly, with no end in sight until one side decides to withdraw or runs out of funds.


The UDRP decision has no bearing on the court's ruling as it is a dispute resolution process established by ICANN, with no legal authority in any country. When registering a domain with a registrar, users agree that domain disputes will be resolved through the UDRP procedure (though it is not applicable to all domains, such as .fr).

In the event of a court case, the judge may direct the registrar to transfer the domain name to the plaintiff if they win the case.


The UDRP proceedings are currently handled by four organizations, with one based in Europe (the WIPO Center in Geneva), two in the USA, and one in Asia (the Asian Center with branches in Hong Kong and China). The choice of which organization to use is solely up to the applicant, though the vast majority choose the WIPO Center or the National Forum for their cases. Each arbitration center has its own Additional Procedural Rules, which outlines specific procedural features unique to that center's dispute resolution process. Although 81% of domain transfer applications are granted, the process may have some flaws.

The UDRP procedure involves an impartial and independent arbitrator, with a possible recusal at any stage of the proceedings until a decision is made. The proceedings are conducted in absentia, with the tribunal considering the case only on the basis of submitted documents and explanations. There is no provision for additional statements or evidence, though the tribunal may, at its discretion, request or ask for additional materials from the parties. The strict provision of paragraph 14(b) allows the tribunal to draw conclusions in favor of one party if the other party fails to comply with the requirements of the Rules or the tribunal, which may be used to substantiate the conclusion of no objections from a defendant who fails to submit a review.

While the arbitration centers have justified their purpose over the years and benefited trademark owners, the UDRP process may not be without its flaws and limitations.


1. The chances of losing ownership of your domain would depend on various factors, including the strength of the trademark claimed by the American law firm, the potential similarity between their trademark and your domain name, and how well the firm can argue that there is a likelihood of confusion between the two. Trademark disputes are often complex and heavily fact-dependent. Consulting an intellectual property attorney would be advisable to better understand your specific situation and assess the risks involved.

2. In cases involving parties from different countries, the legal processes can vary depending on the jurisdictions involved and any relevant international treaties or agreements. Generally, if a legal dispute arises, the court process might require the overseas owner to either appear in person or appoint a representative (such as an attorney) to represent them in court. Whether the owner would need to appear in person would depend on the specific rules and procedures of the jurisdiction where the lawsuit is filed. It's worth noting that in some cases, remote appearances via video conferencing or other means may be possible. Again, consulting an attorney with expertise in international intellectual property law would be recommended to understand the specific procedures that would apply in your situation.

Here are some additional points to consider:

Trademark Strength: The strength of the American law firm's trademark can affect the chances of losing ownership of your domain. If their trademark is deemed to be weak due to its descriptive nature or lack of distinctiveness, it may be more challenging for them to prove infringement.

Likelihood of Confusion: One key factor in trademark disputes is whether there is a likelihood of confusion between the two marks. If a court determines that consumers are likely to be confused between the services offered by your platform and the American law firm's project, it could impact the outcome of the case.

Jurisdiction: The jurisdiction where legal proceedings would take place can impact the trial process. In this case, since the domain owner is a French resident and the American law firm is based in the United States, it would be important to understand the laws and procedures in both countries. International treaties and agreements can also play a role in resolving cross-border disputes.

Legal Representation: It would be advisable for the domain owner to engage legal representation to navigate this situation effectively. An attorney experienced in intellectual property law and cross-border disputes can provide guidance on the best course of action and help protect the owner's interests.

Communicating with the American Law Firm: It may be worth considering engaging in communication with the American law firm to better understand their specific concerns and explore potential ways to resolve the dispute amicably. However, it is essential to seek legal advice before responding or disclosing any information that could potentially harm your case.