Now that the shock has finally started to wear off, the first thing you do is run the numbers in your head and conclude that you will not simply forget about your threatened, stolen or hijacked domain. The recovery of expired or near expired domains is a contract law question, rather than a litigation matter, better reserved for a future article of its own. But whereas reaching that conclusion probably took a few seconds, your next task will take months, not to mention the hours billed by your attorney. In the next and final installment of this three-part series on domain name ownership, we’ll go over how to minimize the likelihood that you will ever have to face this question. But for now we’ll have to do without those pearls of wisdom. So you’re now squarely confronted with the dilemma of how to get full control of your domain back. Once you rule out the less noble options, at best you will have only two possibilities. So you want to  now ask yourself:  Should I litigate or arbitrate my domain dispute? But don’t because it is very likely that civil court litigation is your only option. In short you don’t get to chose the administrative option unless your dispute relates to a registered or famous trademark or you have a mandatory arbitration clause binding you and the opposing party or everyone agrees to arbitration. However, if you do get to choose then the answer is: It depends.

Any time litigation is forced upon you, there are multiple factors to consider before you can take even the first step. Assuming that your domain was, until a few hours ago, minding its own business as the primary URL for your multi-million dollar online enterprise, then your best option is to grab your attorney and run, not walk, to the courthouse. You know, and a judge can easily understand, that every hour your business’ website is down equates to money lost and another week spent trying to recover your prior ranking in the search engines. On the other hand, if your domain won’t earn in a week what your attorney will bill for an hour or the new registrant’s content is already stored on Archive.org, then don’t waste your time rushing to court because your time is better spent on the type of analysis we’re going to cover here.

There are of course more factors to consider than we could go over in the abstract without shortly seeing “blah, blah, blah, blah, blah…” without hope of ever finding the bacon. So we’ll touch on just a few of the main factors to consider. Some come immediately to mind—e.g., cost, likelihood of success, time lost. Others are probably only obvious to someone with experience in this area of the law—e.g., which forum will be more amenable to my fact scenario, should I choose state court or federal court. We’ll take these one at a time.

Unless you have a convenient fact pattern and a quick thinking attorney who can jump on the case immediately, cost is going to be substantial regardless of the route you choose. In the case of trademark infringement disputes, a standard UDRP[1] administrative case filing can easily cost you $4,000 or much more if there are numerous filings by the opposing party. Plus you know from the beginning that you do not have a chance to get your attorney fees, costs or any type of damages or penalties from the opposing party. All you can hope for from a UDRP proceeding is to get the domain name terminated or transferred to your registrar account. On the court litigation side, before even drafting a complaint, small specialty firms require a similar retainer and larger firms, with more overhead, easily require $10,000 or more to initiate litigation over ownership of a single domain name. When you add in the fact that there are very few attorneys with experience litigating domain ownership cases in court, even compared to the number of attorneys who exclusively use the UDRP administrative procedure, most attorneys you hire to go to court will require additional time merely to bone up on the relevant law before they could advise you on your chances of success.

To determine your chances of success, you have to adjust your analysis of the facts depending on which avenue you chose. There are currently numerous administrative forums authorized by ICANN to conduct UDRP proceedings. Some are statistically much more likely to result in an administrative order for a trademark holder than for a current registrant. But even a wide sampling is telling. Of 166 UDRP proceedings with decisions issued between January 29 – February 16, 2007, on 21 resulted in a favorable decision for the domain registrant. When you factor in that many registrants do not have competent counsel in these proceedings you can see that the UDRP route strongly favors mark holders but is by no means a slam dunk. On the other hand if your facts lead to you civil litigation through the courts, it can really get hard to quantify your chances. All manner of issues can and will arise—e.g., how quickly did you react to the loss; how complicated is your relationship with the current registrant; where is the new registrant and their registrar; how complicated is the chain of ownership of your intellectual property rights; does the domain have a tainted past, and if so did you take steps to lustrate it. These and many other questions will have to be answered simply to make sure you won’t be throwing away your money on a lost cause. Finally, in specialized areas of the law, you won’t always get your money’s worth from an expensive attorney, but at least you know they have insurance and a real office in the U.S. 

Time is a relatively simple factor to analyze. In almost every scenario, it will take months if not years to get resolution. Two to five months to get a UDRP decision is very common. Complicated litigation in many states will take nine months to get to court, even if you’re attorney is seeking a bench trial.  The liability issue may be determined earlier on summary judgment, but you would still have to wait for the judge or jury to decide the damages issue in a trial. Yes, if you are very on the ball and have fast access to knowledgeable and conveniently located trial attorneys then you would be able to take advantage of the rare instance when you could get very fast relief from the courts but that scenario is by far the exception from what I’ve observed in this area of the law.

By now you know that your facts will heavily influence whether you opt for administrative or civil litigation. But knowing just how carefully you should weigh the different facts is really an art form. For example, your case may appear as the perfect candidate for civil litigation. You caught the problem early, damages are relatively easy to quantify and they’re growing at a phenomenal rate as your hugely popular website lies dormant. However, just the hint of a dubious past may cause a court to delay a grant of relief or even resolution of your case because the possibly distasteful nature of your content. In this case, the business background of the UDRP process may very well outweigh all other factors and prompt you to opt for faster resolution in lieu of damages from a registrant who may avoid paying you with the assistance of a bankruptcy court or plane ticket out of the country.

Finally we arrive at the state court versus federal court question. Trademark infringement cases can go through the UDRP process or straight to federal court in specific locations determined by your facts, once again. Because so few of these cases actually go to federal court, you’re left with the choice of educating the civil court or probably getting very experienced administrative judges. This isn’t a difficult decision, unless you want to fast relief or to try to be awarded and collect on your attorney fees and some very enticing statutory. However, you may not have a trademark case. If your disgruntled employee or webmaster got fed up with you and walked away with your not yet famous or registered domain name in tow, then you and your attorney will have to find the new registrant, review the relevant laws of that state, and think up the strongest claims you can. Because each state has different laws relating to domain names, if they have any at all, you have to fit your facts into the available law in a credible way, if you want to have any chance of getting relief from a state court. Some states—e.g., Louisiana and New York—have legislation prohibiting the registration of domain names that use the name or nickname of a living person without their permission. So if a person in one of these states registered your name you could go to that state’s courts (not the federal court) and probably take it from them, at least if they didn’t retain an experienced attorney to fight you. Time plays a role with this question also. With the right facts, an attorney can get their client immediate relief through the state courts in just a few days, whereas the federal courts simply take more time.  On the other hand, the federal courts have traditionally offered out-of-state parties an opportunity to avoid local bias. Experience has also shown me that suing someone in federal court gets their attention in a way that state court litigation simply can’t match, unless of course you’re home towning the defendant with some very helpful and relevant statues.