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When most domain name disputes arise, the trademark owner routinely pursues one of three courses of action.  First, the trademark owner may decide to start with a threat letter to the domain name registrant.  Typically, the trademark owner explains why he/she has rights in the domain name, shows why the registrant's registration and/or use violates his/her rights, and threatens to file a lawsuit under the ACPA and collect statutory damages of $100,000.  Second, the trademark owner may simply decide to forego the uncertain response of a threat letter and file a UDRP Complaint.  This arbitration proceeding affords a unique process wherein a decision is rendered within about 60-90 days to either transfer the domain name to the trademark owner or to deny the Complaint if the trademark owner fails to establish trademark rights, an illegitimate use on the part of the registrant, or bad faith registration and use of the domain name by the registrant. Finally, a trademark owner may decide to file a lawsuit in federal court pursuant to the ACPA.  Sometimes this third option is pursued only after one of the first two fail.  Regardless, these three courses of action are undoubtedly the most popular. Trademark owners and domain name registrants who find themselves on the receiving end of a threat letter, a UDRP Complaint, or federal court Complaint need to understand that other options are available for resolving a domain name dispute.  In fact, many of these alternative solutions allow both parties to prevail, so to speak.  Knowledge of such options and flexibility by both involved parties is the key, however.  For example, a solution offered by Fay Vincent to the recent trademark dispute could be equally effective in a domain name dispute: Vincent has been intimately involved with trademark issues in the past. Before becoming baseball commissioner, he was chairman of Columbia Pictures and executive vice president of Coca-Cola. "Coca-Cola very rigorously enforces the word Coke or Coca-Cola, and I would think baseball has every interest in protecting those trademarks," he said. "But they could give those (Cape League) teams a license for $1 each and say, 'You can use it year to year, and if we find it misused we'll revoke the license.' There's certainly ways around it. dSimply put, licensing the continued use of a domain name may be a perfect solution.  The domain name holder can continue to use the domain and the trademark owner can show continued protection of its trademark.  Of course, a licensing situation may not work if the domain name dispute involves a trademark owner and its competitor, who is using an infringing domain name to redirect customers.  However, more often than not, trademark owners simply want to own all of their domain names.  What better way to police those domain names than by licensing the right to continue to use them in the appropriate situation.  Such a factual situation could arise when an authorized reseller registers a domain name incorporating the trademark of the trademark owner's products/services, despite never having received permission to do so.  As long as the reseller/registrant does not misuse the domain name or harm the trademark owner, both parties prosper.  As always, control and adherence to quality standards is one of the trademark owner's greatest priorities, and a licensing agreement not only enables such control, but can also fosters additional, beneficial use. Ultimately, agreements, with varying terms, enable continued use of a domain by the registrant without sacrificing the trademark owner's rights.  Granted, arriving at such an agreement will likely require negotiation, and as such, knowledge and experience of what to and what not to say so as to avoid liability.  Nonetheless, options are available - you just need to know what they are (or more appropriately who it is who has knowledge of them) in order to take advantage of them. Source: Brian Hall writing fro DomainNews.com - Thursday, March 13th, 2008