How to File a UDRP Complaint: Domain Name Disputes

Domain name disputes most often present themselves when a trademark owner learns that another individual or company is using a domain name/s that is in some meaningful way, confusingly similar (or even identical) to the trademark. Now, in certain circumstances, this is not necessarily the result of a concerted effort by the domain name holder to profit off of the good will of the trademark holder but rather an honest attempt by the domain name owner to legitimately market its services, which happen to correspond to those, sold by the trademark holder. However, when a “Cyber squatter” has purchased the domain name with the sole objective of promoting the competitor’s services or harnessing the reputation of the trademark owner to sell the Cyber squatter’s services, the trademark holder has a legal case to commence a Domain Name Dispute Proceeding.

WHAT IS A UDRP COMPLAINT?

A UDRP complaint refers to a legal filing made by a trademark owner to resolve a domain name dispute through a specific administrative process known as the Uniform Domain-Name Dispute-Resolution Policy (UDRP). The UDRP is a policy established by the Internet Corporation for Assigned Names and Numbers (ICANN) to provide a streamlined and cost-effective means of resolving disputes related to domain name registrations.

When a trademark owner believes that a domain name registered by another party infringes upon their rights or is being used in bad faith, they can initiate a UDRP complaint. The complaint sets forth the allegations and arguments of the trademark owner, aiming to demonstrate that they have a legitimate claim to the disputed domain name.

Upon filing a UDRP complaint with an approved dispute resolution service provider, the provider reviews the complaint and initiates the UDRP process. This process typically involves notifying the respondent (the party who registered the disputed domain name) of the complaint, allowing them an opportunity to respond.

During the UDRP proceedings, both parties present their arguments, supporting evidence, and legal positions to a panelist or panel of experts assigned by the dispute resolution provider. The panelist(s) assesses the case based on the requirements outlined in the UDRP, including factors such as the similarity between the domain name and the complainant’s trademark, the respondent’s rights or legitimate interests in the domain name, and evidence of bad faith registration and use.

Upon reviewing the arguments and evidence presented, the panelist(s) renders a decision, either ordering the transfer or cancellation of the disputed domain name or rejecting the complaint. The decision is binding on both parties, and the losing party may have limited options for challenging the decision.

The UDRP provides a streamlined and alternative method for resolving domain name disputes outside of traditional litigation, offering a more efficient and cost-effective avenue for trademark owners to protect their rights in the online space.

DOMAIN NAME DISPUTE POLICIES

While domain name disputes may in theory end up in a court of law, more often than not, they are governed and adjudicated according to a Domain Name Dispute Policy, the most popular of which is the Uniform Domain Name Dispute Resolution Policy (UDRP),which incidentally, is also the most well-established. It applies to gTLDs (including .com, .org,.net etc.) and fundamentally allows a trademark owner to file a complaint against an alleged squatter and transfer, suspend, cancel and/or ultimately acquire by way of transfer the disputed domain name. Proceedings under the UDRP are both much faster and more importantly, much cheaper, to prosecute than cases brought before a court of law.

Less common, but still not entirely unheard of, are domain name disputes brought under the jurisdiction of the Uniform Raid Suspension System (URS) which is a fairly recent domain name dispute policy. It is even cheaper than the UDRP but employs standards, which render it more challenging for the plaintiff to prevail. Critically, Domain Name Dispute Policies effectively require domain registrars to comply with the decision of the tribunal which rules on the proceedings so the plaintiff (who is successful the vast majority of the time) can easily and rather quickly obtain through transfer the disputed domain name.

ELEMENTS OF A UDRP COMPLAINT

A Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaint typically consists of several major elements. Here are the key components:

1. Complainant’s Identification: The complaint should clearly identify the party filing the complaint, including their name, contact information, and any authorized representative.

2. Domain Name(s) in Dispute: The complaint should specify the domain name(s) that are subject to the dispute, along with their corresponding extensions (e.g., .com, .org, .net).

3. Respondent’s Information: The complaint must provide information about the party who registered the disputed domain name(s), including their name, contact details, and any known aliases.

4. Grounds for Complaint: The complaint should outline the grounds on which the complainant believes they are entitled to the disputed domain name(s). The UDRP provides several grounds for a successful complaint, such as:

a. Confusingly Similar: The complainant should demonstrate that the disputed domain name(s) is/are confusingly similar to a trademark or service mark in which they have rights.

b. No Legitimate Interest: The complainant must establish that the respondent has no legitimate interest in the domain name(s) and has registered or used them in bad faith.

c. Bad Faith Registration and Use: The complainant needs to provide evidence that the domain name(s) was/were registered and is/are being used in bad faith, such as to intentionally attract users for commercial gain or to disrupt the complainant’s business.

5. Supporting Evidence: The complaint should include supporting evidence to substantiate the claims made. This may involve providing trademark registrations, evidence of the respondent’s bad faith conduct, screenshots of relevant website content, and any other relevant documentation.

6. Requested Remedies: The complainant should state the remedies sought, such as the transfer or cancellation of the disputed domain name(s).

7. Compliance with UDRP Rules: The complaint must demonstrate compliance with the UDRP’s procedural requirements, including the appropriate payment of fees and adherence to specified deadlines.

It’s important to note that the specific requirements and procedures for filing a UDRP complaint may vary slightly depending on the particular dispute resolution provider chosen by the complainant. Therefore, it’s advisable to consult the provider’s specific guidelines to ensure compliance.

STEPS TO WINNING A UDRP DOMAIN NAME DISPUTE

UDRP complaints are prosecuted under the auspices of specifically designated service providers including the World Intellectual property Organization (WIPO) and the Forum. As we will see in a later portion of this article, the complainant in a UDRP proceeding has to demonstrate the following three elements to prevail:

1. The trademark holder must show that the domain name is identical or confusingly similar to the trademark
2. The trademark holder must show that the registrant of the disputed domain name either has no rights or legitimate interests in the use of the disputed domain name
3. The trademark holder must show that the domain name was both registered in bad faith and is now being used in bad faith.

If the complainant, or trademark holder can satisfactorily demonstrate that all three of these prongs have been met, he will prevail.

ALTERNATIVES TO A UDRP COMPLAINT

There are alternative avenues available to address domain name disputes instead of or alongside filing a Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaint. Some of these options include:

1. Negotiation and Settlement: The parties involved can attempt to resolve the dispute through direct negotiation and reach a mutually acceptable settlement. This may involve discussing the issue, identifying common interests, and finding a compromise that satisfies both parties.

2. Mediation: Mediation involves the assistance of a neutral third party who helps facilitate communication and negotiation between the disputing parties. The mediator does not make a binding decision but works to guide the parties towards a voluntary resolution.

3. Lawsuit: If the dispute involves significant legal issues or complex circumstances, the complainant may choose to file a lawsuit in a court of law. This option allows for a judicial resolution of the matter, with the court making a binding decision on the dispute.

4. Alternative Dispute Resolution (ADR): ADR methods, such as arbitration or expert determination, provide a private and streamlined process for resolving domain name disputes. In these cases, an independent arbitrator or expert is appointed to review the evidence presented by both parties and make a binding decision.

5. Complaints to Registrars: Complainants can directly approach the domain name registrar responsible for managing the disputed domain name(s). Registrars often have their own dispute resolution processes, and filing a complaint with them can potentially lead to a resolution without the need for a UDRP complaint.

6. Domain Name Registry Dispute Resolution: Some top-level domain (TLD) registries have their own dispute resolution procedures, which may differ from the UDRP. These procedures are specific to the respective TLD and can be an alternative option for resolving disputes involving domain names within those TLDs.

It’s important to note that the effectiveness and availability of these alternatives may vary depending on the specific circumstances of the dispute, the applicable domain name policies, and the willingness of the parties involved to engage in alternative methods of resolution.

UDRP FUNDAMENTALS: NAMES AND DOMAIN NAME DISPUTES

Section 4(a)(i) of the UDRP dictates that the complainant must demonstrate to the panel that he has existing trademark rights and that the disputed domain name is confusingly similar to the trademark, either by virtue of it being identical or included within the domain name. Trademark rights are conferred either on the federal level with a registration from the United States Patent and Trademark Office (USPTO) or through the use of the trademark in commerce via Common Law rights. The extent to which the trademark is considered a “strong” mark, vis-à-vis descriptiveness issues and dilution will play at list a minor role in determining any bad faith intentions of the Respondent.

In the event that the trademark holder has rights only under common law and not through a USPTO Registration, the trademark holder (who is the complainant) may marshal forth evidence of his rights by alluding to the amount of time the mark has been used in commerce, the amount of money, to date, spent on advertising, media coverage, venture capital raised, sales figures, etc. The complainant should work hard to demonstrate, if possible, a geographically expansive use of the mark and lay claim to as much territory as possible in order to preclude domain name rights and usage by the competitor in different parts of the country.

Remember, the “confusing similarity” feature of this prong does not demand that the trademark and disputed domain name are identical. Rather, the test is whether or not the domain name would pose a sufficient degree of confusion in the minds eye of the public (or consumer depending on specifics) so that the owner of the Mark is disadvantaged and harmed. Of course, the more distinct the trademark, the more “similar” the disputed domain name needs to be in order to lose under this first element. Simply misspelling the trademark and incorporating it into the domain name does not obviate the problem of confusion and therefore, the defendant-domain name holder must meaningfully vary from the trademark in order to defend against this claim.

 

Legitimate Interests in a Domain Name:

Next, the Complainant must demonstrate to the panel that the Respondent/Defendant does not actually have any legitimate interest in the domain name. The idea here is that if the defendant does not have a legitimate purpose for its use, he must only have registered it for the illegitimate purpose of harming (in some manner) the trademark holder. This is a challenging burden to meet and therefore, the Complainant does not have to prove this definitively but rather only make a prima facie case showing that this is likely. Once the complainant makes this prima facie case, the burden shifts to the respondent to demonstrate that he does have a legitimate interest in the domain name. So, what qualifies as a “legitimate interest”? Fortunately, the UDRP takes at least some of the guesswork out of the equation and provides three fundamental scenarios under which a respondent can show that he has a legitimate right or interest in the disputed domain name:

Section 4(c)(i): Here, the respondent (registrant) makes a concerted effort to use the disputed domain name for the purpose of a bona fide offering of goods or services

Section (c)(ii): Here, the respondent (registrant), either in its capacity as an individual or business has been “commonly known” by the domain name, despite not yet obtaining trademark rights

Section (c)(iii): Here, the respondent (registrant) is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”

It is worthwhile to delve a bit deeper into each one of these points:

 

Bona Fide Offerings:

Again, there are several variables that the panel will consider here but fundamentally, the question will turn on if/when the registrant had notice of the dispute and whether the registrant can show that it has already provided the offering of goods/services or if it can demonstrate that it has real and meaningful plans to provide goods/services in the near future. In the event that it becomes apparent that the registrant has provided good/services but with the purpose of trading on the complainant’s trademark and goodwill, it will not be considered “bona fide offerings.” Again, it is not enough for the registrant to say that he intends to sell goods/services, he must provide meaningful evidence of this intent.

 

Registrant’s Fame and Association with Disputed Domain Name:

Perhaps the easiest way to demonstrate the “commonly known” standard is by showing that the business name is the same or sufficiently similar to the disputed domain name. How can you tell? Well, the complainant simply needs to investigate the WHOIS record of the domain name and see if the personal or business name, establishing proprietorship, is the same or sufficiently similar to the domain name itself. So, if the domain name is “Alphazerox” and it turns out the the WHOIS records shows that the owner of the domain name is Alpha Zero X, Inc., it can be said, at least superficially, that the registrant is commonly known by the domain name.

 

Non-Commercial and/or Fair Use:

Fair Use is a legal doctrine which suggests that while the registrant may very well be using a domain name which is very similar to the trademark, there is never the less a legitimate reason to do so including; for example, the registrant has built a website containing a legitimate critique of complainant’s website. The doctrine of fair use is predicated on 1^st amendment law which seeks to maximize an individual’s right to express his opinion and free speech.

Remember, it is incumbent on the Complainant to at least provide a prima facie case that Respondent does not have a “legitimate interest” in the disputed domain name so it would be prudent for the Complainant to conduct the necessary research to ascertain that at least a prima facie case can be made before filing the complaint.

 

Bad-Faith Registration and Use:

The Bad-Faith standard has a bit of a, “you know it when you see it”, character and the idea is here is that a registrant should not be able to register a domain name using the trademark of another with the intent and effect of profiting off of the hard work and fame garnered by another’s mark.

The UDRP provisions which cover this element specifically include the following list of examples of “bad-faith” in action”:

“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or

(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or

(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or

(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”

Please note, these four examples encompass both an emphasis on intent and use. The degree to which one or the other or both, Intent and use are required is not obvious and will likely be weighed by panelists according to the facts of the case.

WHAT IS A DOMAIN NAME?

A domain name represents a web address that allows Internet users to locate websites. Each domain name is unique to its site. Therefore, you cannot use one domain name for more than one site. Common extensions that are used for domain names include .com, .net, and .org.

You can also use a domain name for other web applications, such as email correspondence and (ftp) file transfers. For example, the domain name of our law firm is www.cohnlg.com, and our client’s contact us directly at connect@cohnlg.com when they have a legal question about domain name disputes.

What IS A DNS?

A DNS is an acronym that stands for domain name system. This system is used to locate and translate domain names to Internet Protocol or IP addresses. You can also translate IP addresses to domain names using a DNS. IP addresses represent physical points on the web. Because IP addresses are long and can be hard to decipher, a domain name is used to make it easier for people to locate a website.

WHAT IS A GENERIC TOP-LEVEL DOMAIN AND HOW IS IT USED? 

A generic top-level domain, or gTLD, represents the top-level domain of a web address. Examples of gTLDs include .net, .com, or .org. On November 16, 2000 ICANN (the Internet Corporation for Assigned Names and Numbers) included seven additional gTLDs. These seven domains include the following:

• .aero – for aviation businesses
• .info (for unrestricted use)
• .museum (for museum domain use)
• .biz – (for businesses)
• .coop – (for cooperatives)
• .pro (for professionals, such as accountants)
• .name (for the use of people using their personal name)

WHAT IS A COUNTRY CODE TOP-LEVEL DOMAIN AND HOW IS IT USED? 

A country code top-level domain (ccTLD) is a two-letter Internet top-level domain (TLD) that is used to designate a specific country or territory. These domains are typically used to indicate the association of a website or an online presence with a particular country.

Each country has its own unique ccTLD. For example, “.us” represents the United States, “.uk” represents the United Kingdom, and “.ca” represents Canada. These ccTLDs are based on the ISO 3166-1 alpha-2 standard, which is a two-letter country code system used by many organizations worldwide.

The primary purpose of ccTLDs is to provide a localized web presence for individuals, organizations, and businesses associated with a specific country. They can be used by governments, businesses, educational institutions, and individuals to create websites, host email servers, and establish an online identity with a clear national affiliation.

The use of a ccTLD can provide several benefits. It helps internet users quickly identify the country to which a website belongs. It can also help search engines deliver more relevant results to users based on their geographical location. Additionally, some ccTLDs have specific registration requirements or restrictions, which may include residency or a physical presence in the associated country.

However, it’s important to note that while ccTLDs are associated with specific countries, they are not limited to use by entities within those countries. In some cases, ccTLDs have been used by organizations or individuals for creative purposes or as a play on words.

Overall, ccTLDs are a way to enhance online identification with a particular country or territory, helping establish a localized online presence and facilitating better targeting of online services and information.

WHY DO MOST DOMAIN NAME DISPUTES HAPPEN?

Most disputes over domain names arise when a cybersquatter registers a domain name in bad faith with the explicit purpose of profiting off of the registered trademark of another. Clearly, this is both commercially and ethically problematic. Why? The essential business model of the Cyber Squatter is to wait until a trademark holder has built a strong brand name and then build a website designed purely to profit off of the trademark holder’s reputation and success.

While cybersquatting is the most common reason for a domain name dispute,  disputes can occur for several reasons, but some of the most common factors that contribute to such disputes are:

1. Trademark Infringement: One major cause of domain name disputes is when a domain name is similar to a registered trademark or trade name of another entity. This can lead to confusion among consumers or dilute the value of the established brand.

2. Typosquatting: Typosquatting, also known as URL hijacking, involves registering domain names that are variations or misspellings of popular websites or trademarks. The intent is to divert traffic from the legitimate website to the typosquatter’s site, often for advertising revenue or phishing purposes.

3. Domain Name Grabbing: Domain name grabbing occurs when someone registers a domain name that is the same as or closely related to a famous person’s name, a popular brand, or an emerging trend with the intention of selling it at a higher price to the interested party later.

4. Competitor Disputes: Competitors in the same industry may dispute domain names if they believe it gives an unfair advantage or misleads consumers. This can happen when a domain name is similar to a competitor’s brand, causing confusion or diverting potential customers.

5. Personal Disputes: Domain name disputes can also arise from personal conflicts or disagreements between individuals or organizations. This can occur when someone registers a domain name that includes another person’s name or infringes upon their personal rights.

To resolve these disputes, various dispute resolution mechanisms exist, such as the Uniform Domain-Name Dispute-Resolution Policy (UDRP) and legal actions through courts. These processes aim to protect the rights of trademark owners and resolve conflicts surrounding domain name ownership.

WHAT IS ICANN’S ROLE IN THE DISPUTE RESOLUTION PROCESS?

The Internet Corporation for Assigned Names and Numbers (ICANN) is the nonprofit organization which manages gTLDs, such as .com and .net. Fundamentally, it is responsible for the promulgation and stewardship of domain names and naturally has a very large role to play in this story. In the late 1990’s, ICANN determined that domain name conflicts and disputes would only increase as the internet became more powerful and prevalent and therefore, in 1999, ICANN officially adopted and instituted the Uniform Domain Name Dispute Resolution POLICY (UDRP). Under the policy, WIPO serves as ICANN’s leading domain name resolution provider although the Forum is becoming an increasingly popular resolution provider as well.

WHAT IS THE UDNRP’S PRIMARY ROLE?

The Uniform Domain Name Resolution Policy (UDNRP), adopted by ICANN, on August 26, 1999, is the governing policy, which mandates the procedural and substantive protocols for handling domain name disputes. Under this policy, trademark holders who believe that Cybersquating is disputants who believe a domain name registration infringes upon their trademark can begin a proceeding under the UDNRP. Legally, a registrant must take part in the proceedings, per the terms and conditions for gTLD domain name registration.

FILING A DOMAIN NAME COMPLAINT WITH WIPO

What Should You Include in Your Domain Name Complaint?

The UDNRP allows anyone filing a complaint to use a resolution service company. WIPO is undoubtedly the most popular resolution provider and requires only a few fundamental items to commence the process.

To file a complaint, the following information must be included among the submitted documents:

• The domain name (or domain names if multiple domains are in dispute)
• The holder of the domain or the respondent
• The domain name registrar
• A detailed showing that the complainant has a trademark implicated by the disputed domain name
• A detailed reason arguing why the respondent does not have any rights or legitimate interests in the domain name
• A detailed reason arguing why the domain name was registered and is now being use din bad faith

HOW ARE WIPO CASES DECIDED?

WIPO (World Intellectual Property Organization) cases are decided through the Uniform Domain-Name Dispute-Resolution Policy (UDRP), which is a process for resolving domain name disputes. The UDRP is an international policy adopted by ICANN (Internet Corporation for Assigned Names and Numbers) and is administered by WIPO.

Here is an overview of the process for deciding WIPO cases:

1. Filing a Complaint: The complainant, who believes they have rights to a domain name that is being improperly used or registered by another party, initiates the process by filing a complaint with WIPO. The complaint must include details such as the disputed domain name, the grounds for complaint (e.g., trademark infringement), and evidence supporting their claim.

2. Notification to Respondent: WIPO reviews the complaint and, if it meets the requirements, sends a notification to the respondent (the current domain name registrant). The respondent is given a specific time period to respond to the complaint.

3. Response by Respondent: The respondent has an opportunity to present their side of the case and provide arguments or evidence to support their rights to the domain name. Failure to respond does not automatically result in a decision in favor of the complainant.

4. Appointment of Panel: If the respondent submits a response or the allotted time for response expires, WIPO appoints a panel of one or three experts who are experienced in domain name disputes and IP law. The panel members are independent and impartial.

5. Panel Review: The panel reviews the complaint, response, and supporting evidence from both parties. They assess whether the complainant has satisfied the three main elements required for a successful complaint: (a) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights, (b) the respondent has no legitimate rights or interests in the domain name, and (c) the domain name has been registered and is being used in bad faith.

6. Decision: Based on the panel’s assessment, they make a decision on the case. If the panel finds in favor of the complainant, they may order the transfer or cancellation of the disputed domain name. The decision is typically communicated to both parties and the relevant domain name registrar.

7. Appeal or Implementation: After the decision is rendered, there is a limited period during which either party may seek further legal recourse through a court or accept the decision and proceed with its implementation, such as transferring the domain name to the complainant.

WHAT ARE THE POSSIBLE OUTCOMES IN A DOMAIN NAME DISPUTE WITH WIPO?

Remember, the core of any domain name dispute is the evaluation of the three-prong test:

1. Does the Complainant have a Trademark, which is identical or confusingly similar to the domain name?
2. Does the Respondent have a legitimate interest in the domain name?
3. Was the domain name registered and now used in bad faith?

If the panelists determine that the answer to all three of these questions is “Yes”, the Complainant will prevail and the domain name will be transferred. However, please note, the Complainant WILL NOT be awarded monetary damages or court-ordered relief even upon winning a UDNRP domain name dispute.

ARE WIPO DECISIONS FOR CASES POSTED ONLINE?

Yes, WIPO decisions for cases are posted online and are publicly accessible. WIPO maintains a website where they publish the decisions made by their panels in domain name dispute cases resolved under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). These decisions are available for anyone to review and can provide valuable insight into the reasoning and outcomes of different cases.

The WIPO website provides a searchable database of UDRP decisions, allowing users to search by various criteria such as the domain name, complainant, respondent, and panelist. The decisions are typically published in a standardized format that includes details of the case, the parties involved, the panel’s findings, and the decision reached.

Publishing the decisions online serves multiple purposes. It promotes transparency in the dispute resolution process, allowing parties and the public to understand how UDRP panels interpret and apply the policy in different circumstances. It also helps establish precedent and consistency in the resolution of domain name disputes, as previous decisions can serve as guidance for future cases.

It’s worth noting that while WIPO decisions are publicly available, the personal information of the parties involved, such as their addresses or contact details, is usually redacted to protect their privacy. The focus is on providing the legal analysis and reasoning behind the decision rather than disclosing sensitive personal information.

FILING A DOMAIN NAME COMPLAINT WITH THE FORUM

Similar to WIPO, the FORUM is a dispute resolution company, which is charged with the mandate by ICANN to manage and adjudicate disputes involving domain names. Substantively, the FORUM considers the same three-prong test as WIPO (the existence of a relevant trademark, legitimacy of respondent’s use in the domain name, the extent to which the domain name was registered and used in bad faith) but procedurally, it is slightly different and arguably more nuanced.

THE FORUM PROVIDES EXCELLENT CUSTOMER CARE AND SERVICE 

Once a complainant files a complaint, he/she will be assigned a case coordinator. While the case coordinator may not legal advice (at least on a substantive level), he can help with any procedural questions. Some of the questions you can ask your case coordinator include the following:

• Where do I obtain a specific form?
• How long will this part of the process take?
• Do I need to Serve the other party with a document?
• How much will Petition X cost to file?

While the FORUM does not have a “hotline” per se, the Complainant and indeed respondent can email directly with the case coordinator and expect a response fairly quickly.

 

COMMON QUESTIONS ABOUT FILING WITH THE FORUM

Can a decision be removed in its entirety once it has been posted on the domain resolution website?

No. Once a decision is made, it must be posted in its entirety with few and rare exceptions. This includes the addition of the Complainant’s Name and the Respondent’s.

If I lose, may I appeal the decision?

Yes. Either of the two parties in a dispute case may bring an action prior, during, and following a domain dispute case. If you are a losing respondent, you can appeal the case within 10 business days of a decision.

Does a copy of a complaint need to be served on the registrar?

Possibly. In some instances, the Supplemental rules state that a complainant must serve a copy of the complaint on the registrar. Because policies vary, you need to check with your case coordinator.

Can I obtain an extension of time to file an amended complaint?

Kind of. If you require more time to amend the complaint, you will need to first withdraw the complaint and then refile it.

Do digital copies of the complaint suffice or are hard copies required?

Most policies do not mandate that hard copies be sent. Confirm if you need to send hard copies with the coordinator for your case.

How should I submit the paperwork?

When possible, the UDRP, recommends that all documentation be filed and submitted by electronic means. Please email the case coordinator with detailed questions.

Is it possible to file a complaint with a .com domain name and .net domain name if the respondent is the same?

No. In this instance, you must file a separate complaint for each name, as the standards/rules vary for each.

Can a Filing Fee Ever be refunded?

Unfortunately not. The Forum as a matter of policy will not return monies.

HOW MUCH DOES IT COST TO FILE A UDRP COMPLAINT?

As with all legal matters, there are both required filing fees and legal service fees to calculate. Concerning the filing fees, depending on the number of domain names that are in dispute and the number of panelists involved in the adjudication process, the price will very. If there are anywhere from one to five domain names and only one panelist on the panel, the filing fee will be under $2000. However, if there are more than five domain names in dispute, with 3 panelists, the filing fees will be closer to $5000. Similarly, depending on the complexity of the case, the legal fees will vary. Please note, if there is only one panelist, it is incumbent on the Complainant to pay rather than the respondent.

Principally, you will only pay a fee when filing your dispute (as the Complainant). However, be forewarned and prepared, as you could pay more in costs, depending on the provider you choose, the nature of the dispute, and the number of administrative “judges” you choose to have on the Administrative panel which will decide your case.

HOW MUCH DO PROVIDERS CHARGE FOR THE REQUIRED FILING FEE?

As this article has already covered, UDRP complaints can only be filed in a qualified and designated arbitration body. Whether the Complainant chooses to avail himself of the Forum or World Intellectual Property Organization (WIPO), there is an initial filing fee that is prima facie incumbent upon the Complainant to burden.

The WIPO filing fee begins at $1,500 for filing a Complaint and covers as many as five domain names, and a single-member panel. The filing fee for filing the initial Complaint with the Forum starts at $1,300 and covers up to two domain name registrations and again, allows for a single-member panel.

Other dispute providers charge filing fees as follows:

• The ADNDRC (Asian Domain Name Dispute Resolution Centre) requires a filing fee of $1,300 for a Single Panelist and $2800 for Three Panelists;
• The ACDNDR (Arab Center for Domain Name Dispute Resolution) charges a minimum fee of $1,500; and
• The Czech Arbitration Court has a slightly more dynamic process for assigning the fee schedule.

Remember, if you are the Complainant, you have the power to select the venue that you believe to be most favorable to your case. Typically, this means that you will either be filing the complaint before WIPO or the Forum. However, just because you have the power to request a single-member panel, that does not mean that the Respondent does not have the right to request a 3-member panel. In this case, the financial burden actually shifts to the Respondent who is now required to pay for half of the fee for the newly requested and granted, 3-member panel. This is true irrespective of which service provider the Complainant has chosen to initially file the complaint; WIPO, FORUM, ADNDRC etc.

 

Other Possible Fees through the Forum

If you choose the Forum in which to file your UDRP complaint, you may invariably be subject to additional fees.

The Forum charges an additional fee if a respondent or complainant includes additional paperwork to their response or complaint. This may happen when either party wants to respond to the other party’s supplemental filing. Because the right to provide additional responses is not expressly granted under UDRP Policy, the Forum has the right, and indeed avails itself of that right, to charge additional filing fees. Please note, submitting the additional fee is no guarantee that the panel adjudicating the case will necessarily take the filings into consideration when issuing a final verdict.

While the Forum does not charge any additional fee for an extension of time request for 4 days, the Forum does charge an additional payment of $100 which allows for an extension request of up to 20 additional days. Typically, this $100 is well worth the price and allows the Respondent to gather his/her resources and put together a more developed Response.

WHICH COUNTRIES HAVE ADOPTED THE UDPR?

If you are reading this article from America, you may very well have taken for granted that all countries have adopted the UDRP. This is of course, not the case, and depending on which country the Complainant is in, the UDRP may or may not be an option. Most relevant to this audience and North America in particular is the example of Canada’s .ca ccTLD.  The critical difference (although there are of course more than just a few) between the UDRP and other policies is the extent to which the three factors of the Cybersquating test are required to be met. Presently, just over 40 different countries have offically adopted the UDRP as the governing policy and consequently, complainant’s in any of these countries have the right to file complaints under the UDRP with any UDRP designated service provider including WIPO and the Forum.

CANCELLING DOMAIN NAMES IN UDRP DISPUTES

What happens when there’s a dispute over a domain name? There are two remedies spelled out in Uniform Domain Name Dispute Resolution Policy (UDRP). Specifically, paragraph 4(i) of the UDRP says:

“The remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to 1. Requiring the cancellation of your domain name; 2. or request that your Registered Name be transferred to the complainant”

Basically, what this means is that the trademark owner who prevails in a complaint has two options to choose from: Obtaining ownership of the domain name by means of transfer or Cancelling the name outright.

In the vast majority of cases where the trademark owner wins the decision, the domain name is transferred to the trademark owner. However, domain name disputes can also be resolved by cancellation of the disputed domain name.

It’s frankly hard to understand why anyone would choose to cancel a domain name rather than simply obtain ownership of it and consequently, this is a very outcome indeed; Some of the largest UDRP service providers report only a handful to a few dozen cancellations out of thousands of cases.

DOMAIN NAME CANCELLATION IS NEARLY ALWAYS COUNTER-PRODUCTIVE

The reason that cancellations are such an unpopular remedy in UDRP cases is rather quite obvious. Once the domain name is cancelled, it can be snatched up by anyone else.

A trademark owner is better off gaining ownership of the domain name through transfer rather than risk someone else getting it and potentially having to go through the entire UDRP process all over again.  Maintaining the domain name will only cost the owner a very nominal fee which when compared to the cost and hassle of filing another UDRP complaint should someone else gain ownership of the domain name, is self-evidently worth it.

TRADEMARK CANCELLATIONS ARE OFTEN THE RESULT OF POOR COUNSEL

Despite transfers being the better choice in UDRP cases, cancellations do occur sometimes. There are three major reasons why:

1. A trademark owner may be under the false assumption that cancelling a domain name will keep it off the market permanently. A quick consultation with a trademark attorney before requesting cancellation would prevent that.
2. A trademark owner may be willing to gamble that no one will want a domain name that has been involved in an UDRP dispute. But why take the risk when it’s so inexpensive to prevent it from happening at all?
3. A domain name may contain a third party’s trademark in addition to that of the trademark owner

The bottom line is that cancelling a domain name is rarely, if ever, the best remedy in UDRP proceedings. It’s always better to request a transfer of ownership.

REVERSE DOMAIN NAME HIJACKING (RDNH)

Naturally, the Uniform Domain-Name Dispute Resolution Policy (UDPR), like the larger legal system, does not look favorably upon a frivolous complaint.  A plaintiff who submits a UDRP complaint in bad faith is said to have engaged in Reverse Domain Name Hijacking (RDNH) which is a very serious indeed. What constitutes RDNH?

As delineated in Paragraph 15 of the UDRP Rules, if, “after considering the submissions the panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding”.

Critically, the fact that the plaintiff does not prevail is not in it of itself evidence that RDNH took place. Rather, UDRP panels look to a variety of factors which hopefully help get to the larger question of Bad Faith. The UDPR, on the highest level, is concerned with a complainant, in bad faith, depriving a legitimately registered domain-name holder of making use of his rightfully acquired and used domain name. Specifically, a panel may consider the following questions:

 

• Did the complainant know prior to filing the complaint that he could not reasonably expect to prevail in any of the three required elements (due to having no trademark rights, defendant did have a legitimate interest, defendant did register and use the domain in good faith)?

 

• Did the complainant know prior to filing the complaint that none of the facts (which is distinct from the legal theory) were in his favor?

 

• Did the complainant know prior to filing the complaint that past case law and precedent with a similar set of facts necessarily meant that he could not prevail?

 

• Did the complainant know prior to filing the complaint that he submitted false and perhaps even fraudulent evidence to support what would otherwise be a losing case

 

• Did the complainant fail to disclose to the UDRP that the present filing is in fact a UDRP  refiling?

 

In sum, there is no set guide for “Bad Faith” but rather a, “You Know it When You See It” standard.  It is therefore critical for complainants to do their due diligence prior to filing a formal complaint. Due diligence must necessarily involve a deep understanding of the three essential conditions of prevailing in a UDRP complaint and very likely a discussion with an experienced trademark attorney to discuss the facts of your case.

 

A Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaint typically consists of several major elements. Here are the key components:

 

1. Complainant’s Identification: The complaint should clearly identify the party filing the complaint, including their name, contact information, and any authorized representative.

 

2. Domain Name(s) in Dispute: The complaint should specify the domain name(s) that are subject to the dispute, along with their corresponding extensions (e.g., .com, .org, .net).

 

3. Respondent’s Information: The complaint must provide information about the party who registered the disputed domain name(s), including their name, contact details, and any known aliases.

 

4. Grounds for Complaint: The complaint should outline the grounds on which the complainant believes they are entitled to the disputed domain name(s). The UDRP provides several grounds for a successful complaint, such as:

 

– Confusingly Similar: The complainant should demonstrate that the disputed domain name(s) is/are confusingly similar to a trademark or service mark in which they have rights.

– No Legitimate Interest: The complainant must establish that the respondent has no legitimate interest in the domain name(s) and has registered or used them in bad faith.

– Bad Faith Registration and Use: The complainant needs to provide evidence that the domain name(s) was/were registered and is/are being used in bad faith, such as to intentionally attract users for commercial gain or to disrupt the complainant’s business.

 

5. Supporting Evidence: The complaint should include supporting evidence to substantiate the claims made. This may involve providing trademark registrations, evidence of the respondent’s bad faith conduct, screenshots of relevant website content, and any other relevant documentation.

 

6. Requested Remedies: The complainant should state the remedies sought, such as the transfer or cancellation of the disputed domain name(s).

 

7. Compliance with UDRP Rules: The complaint must demonstrate compliance with the UDRP’s procedural requirements, including the appropriate payment of fees and adherence to specified deadlines.

 

It’s important to note that the specific requirements and procedures for filing a UDRP complaint may vary slightly depending on the particular dispute resolution provider chosen by the complainant. Therefore, it’s advisable to consult the provider’s specific guidelines to ensure compliance.

 

There are alternative avenues available to address domain name disputes instead of or alongside filing a Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaint. Some of these options include:

 

1. Negotiation and Settlement: The parties involved can attempt to resolve the dispute through direct negotiation and reach a mutually acceptable settlement. This may involve discussing the issue, identifying common interests, and finding a compromise that satisfies both parties.

 

2. Mediation: Mediation involves the assistance of a neutral third party who helps facilitate communication and negotiation between the disputing parties. The mediator does not make a binding decision but works to guide the parties towards a voluntary resolution.

 

3. Lawsuit: If the dispute involves significant legal issues or complex circumstances, the complainant may choose to file a lawsuit in a court of law. This option allows for a judicial resolution of the matter, with the court making a binding decision on the dispute.

 

4. Alternative Dispute Resolution (ADR): ADR methods, such as arbitration or expert determination, provide a private and streamlined process for resolving domain name disputes. In these cases, an independent arbitrator or expert is appointed to review the evidence presented by both parties and make a binding decision.

 

5. Complaints to Registrars: Complainants can directly approach the domain name registrar responsible for managing the disputed domain name(s). Registrars often have their own dispute resolution processes, and filing a complaint with them can potentially lead to a resolution without the need for a UDRP complaint.

 

6. Domain Name Registry Dispute Resolution: Some top-level domain (TLD) registries have their own dispute resolution procedures, which may differ from the UDRP. These procedures are specific to the respective TLD and can be an alternative option for resolving disputes involving domain names within those TLDs.

 

It’s important to note that the effectiveness and availability of these alternatives may vary depending on the specific circumstances of the dispute, the applicable domain name policies, and the willingness of the parties involved to engage in alternative methods of resolution. It is advisable to consult legal professionals or dispute resolution service providers for guidance on the most appropriate course of action based on the specific situation.

UDRP COMPLAINT FAQ

 

1. Q: What is a UDRP complaint?

 

A: A UDRP complaint refers to a legal action initiated under the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP is a policy established by the Internet Corporation for Assigned Names and Numbers (ICANN) to resolve disputes related to domain names. When someone believes that a domain name registered by another party infringes upon their trademark rights or is being used in bad faith, they can file a UDRP complaint.

 

The UDRP provides a streamlined and cost-effective alternative to traditional legal proceedings, allowing trademark owners to seek the cancellation or transfer of a domain name that is registered and used in violation of their rights. The complainant must demonstrate three key elements to succeed in a UDRP complaint:

 

1. The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.
2. The current domain name holder has no legitimate rights or interests in the domain name.
3. The domain name has been registered and is being used in bad faith.

 

If the UDRP panel finds in favor of the complainant, it can order the transfer of the disputed domain name to the complainant or its cancellation.

 

UDRP complaints are typically filed with approved dispute resolution service providers, such as WIPO or the National Arbitration Forum (NAF), who administer the proceedings according to the UDRP rules. The process usually involves submitting a complaint, notifying the domain name holder, and allowing them an opportunity to respond. A panel of one or three experts appointed by the dispute resolution service provider then reviews the evidence presented by both parties and issues a decision.

 

It’s important to note that UDRP complaints are specific to domain name disputes and do not address broader issues of trademark infringement or other legal claims. If a complainant seeks remedies beyond the transfer or cancellation of a domain name, they may need to pursue additional legal actions in the appropriate jurisdiction.

 

2. Q: Who can file a UDRP complaint?

 

A: The UDRP allows certain parties to file a complaint to initiate a domain name dispute resolution process. The following entities or individuals can typically file a UDRP complaint:

 

1. Trademark Owners: The most common filers of UDRP complaints are trademark owners who believe that a registered domain name infringes upon their trademark rights. To file a UDRP complaint, the trademark owner must demonstrate that they have valid rights in a trademark that is identical or confusingly similar to the disputed domain name.

 

2. Authorized Licensees: In some cases, authorized licensees of a trademark may have the right to file a UDRP complaint. These are individuals or entities that have been granted permission to use the trademark by the trademark owner. The UDRP requires the licensee to provide evidence of their authorization to act on behalf of the trademark owner.

 

3. Legal Representatives: Attorneys or legal representatives acting on behalf of trademark owners or authorized licensees can file UDRP complaints. They must demonstrate their authority to represent the trademark owner or licensee by providing appropriate documentation or power of attorney.

 

It’s important to note that UDRP complaints can only be filed against domain names that are registered under generic top-level domains (gTLDs) such as .com, .net, .org, and others. Country-code top-level domains (ccTLDs) may have their own dispute resolution policies and procedures.

 

3. Q: Where can I file a UDRP complaint?

 

A: UDRP complaints can be filed with approved dispute resolution service providers that are authorized to administer domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP). The selection of the dispute resolution service provider depends on the specific domain name registration agreement and the chosen provider’s accreditation by the Internet Corporation for Assigned Names and Numbers (ICANN).

 

There are several dispute resolution service providers that handle UDRP cases, including:

 

1. WIPO (World Intellectual Property Organization): WIPO is a leading provider of UDRP services and is widely used for domain name disputes. They offer dispute resolution services for various domain name extensions.

 

2. NAF (National Arbitration Forum): NAF is another prominent dispute resolution service provider that handles UDRP cases. They have a panel of experts who review the complaints and make decisions based on the UDRP guidelines.

 

3. CAC (Asian Domain Name Dispute Resolution Centre): CAC specializes in handling domain name disputes involving Asian domain extensions, such as .cn (China), .jp (Japan), and .kr (South Korea), among others.

 

4. ADNDRC (Asian Domain Name Dispute Resolution Centre): ADNDRC is another dispute resolution provider focused on resolving domain name disputes related to Asian domain extensions.

 

When filing a UDRP complaint, it is important to review the rules and procedures of the selected dispute resolution service provider. Each provider may have specific requirements regarding the format of the complaint, the applicable fees, and the timeline for the proceedings.

 

The jurisdiction for UDRP complaints is typically determined by the registration agreement of the domain name in question. The specific provider chosen will generally depend on the agreement and the corresponding provider’s availability for that particular domain name extension.

 

4. Q: What are the grounds for a successful UDRP complaint?

 

A: To succeed in a UDRP complaint, the complainant must demonstrate three key elements:

 

1. Similarity or Identity: The domain name in question must be identical or confusingly similar to a trademark or service mark in which the complainant has rights. This means that the domain name should closely resemble the complainant’s trademark, taking into account the overall impression, spelling, sound, and commercial impression.

 

2. Lack of Legitimate Rights or Interests: The complainant must establish that the current domain name holder has no legitimate rights or interests in the domain name. This requires showing that the respondent does not have any legitimate business or non-commercial purpose in using the domain name, nor any legitimate trademark rights associated with it.

 

3. Bad Faith Registration and Use: The complainant must provide evidence that the domain name was registered and is being used in bad faith. Bad faith can be demonstrated through various factors, including the intention to profit from the complainant’s trademark, creating confusion among consumers, disrupting the complainant’s business, or engaging in a pattern of abusive registrations.

 

If the complainant successfully proves all three elements, the UDRP panel can order the transfer or cancellation of the disputed domain name. It’s important to note that the UDRP is designed to address clear cases of cybersquatting and trademark infringement, and it does not deal with broader legal issues beyond the domain name dispute.

 

When preparing a UDRP complaint, it is essential to gather sufficient evidence, such as trademark registrations, evidence of the respondent’s lack of legitimate interests, and proof of bad faith. Consulting with a trademark attorney or intellectual property professional experienced in UDRP proceedings can greatly assist in building a strong case and maximizing the chances of a successful outcome.

 

5. Q: What remedies can I seek in a UDRP complaint?

A: In a UDRP complaint, there are two primary remedies that a complainant can seek if they succeed in proving their case. These remedies are:

 

1. Transfer of the Domain Name: The most common remedy granted by UDRP panels is the transfer of the disputed domain name to the complainant. If the panel finds in favor of the complainant and determines that the domain name is being used in violation of the complainant’s rights, they can order the transfer of the domain name from the current registrant to the complainant. This allows the complainant to gain control and ownership of the domain name.

 

2. Cancellation of the Domain Name: In certain cases, where the UDRP panel determines that the domain name was registered and is being used in bad faith, they may order the cancellation of the domain name. This means that the domain name will be deleted and become available for registration by other parties. Cancellation is typically considered when the domain name itself has no legitimate purpose or when the bad faith of the registrant is particularly egregious.

 

It’s important to note that UDRP proceedings are specifically designed to address domain name disputes and do not encompass broader legal issues or seek monetary damages. The primary objective is to resolve the conflict between the complainant’s rights and the registration and use of a domain name that infringes upon those rights.

 

If a complainant seeks monetary damages or other forms of relief beyond the transfer or cancellation of the domain name, they may need to pursue additional legal actions in the appropriate jurisdiction outside of the UDRP process.

 

6. Q: What is the timeframe for filing a UDRP complaint?

 

A: The timeframe for filing a UDRP complaint depends on several factors, including the specific circumstances of the case and the applicable domain name registration agreement. Here are some key points to consider regarding the timeframe:

 

1. Statute of Limitations: While there is no fixed statute of limitations for filing a UDRP complaint, it is generally advisable to initiate the process as soon as possible after becoming aware of the infringing domain name. Delay in filing a complaint may weaken the argument of the complainant and could be viewed unfavorably by the UDRP panel. Taking prompt action is crucial to protect your rights and prevent potential harm caused by the infringing domain name.

 

2. Continuous Monitoring: It is beneficial for trademark owners to regularly monitor domain name registrations to identify potential infringements. This can be done through various means, such as employing online monitoring services or conducting periodic searches using domain name registrars’ databases. Early detection of infringing domain names allows for timely action and strengthens the chances of a successful UDRP complaint.

 

3. Domain Name Expiration: If the infringing domain name is close to its expiration date, it may affect the timing of filing a UDRP complaint. In such cases, the complainant may choose to wait until the domain name expires and attempt to register it through normal channels rather than pursuing a UDRP complaint. However, this approach carries risks, as there is no guarantee that the domain name will become available or that it won’t be registered by another party.

 

4. Response Period: Once a UDRP complaint is filed, the respondent (the current domain name holder) is provided a specific timeframe to submit a response. The response period is usually around 20 days, but it can vary depending on the dispute resolution service provider administering the case. After the response is received, the UDRP panel will review the arguments presented by both parties and proceed with the decision-making process.

 

7. Q: How long does the UDRP process typically take?

 

A: The duration of the UDRP process can vary depending on several factors, including the complexity of the case, the workload of the selected dispute resolution service provider, and the responsiveness of the parties involved. While the UDRP rules do not set a specific timeline for the completion of the process, here are some general considerations regarding the duration:

 

1. Filing to Decision: From the time of filing a UDRP complaint to receiving a decision, the process typically takes around two to three months. This period may vary based on the workload of the dispute resolution service provider and the efficiency of the parties in submitting required documents and responding to inquiries.

 

2. Response Period: After the complainant files a UDRP complaint, the respondent (the current domain name holder) is given a specific timeframe, typically around 20 days, to submit a response. The response period allows the respondent to present their arguments and evidence in defense of their registration and use of the domain name.

 

3. Panel Appointment and Review: Once the response period ends, the dispute resolution service provider appoints a panel of experts to review the complaint and response. The panel examines the evidence, considers the arguments presented, and makes a decision based on the merits of the case. The time taken for panel appointment and decision-making can vary, but it is generally within a few weeks to a couple of months.

 

4. Extensions and Additional Proceedings: In some instances, either party may request extensions of the timeframes, which can prolong the process. Additionally, if a party challenges the panel’s decision, it may lead to additional proceedings, such as a request for reconsideration or court proceedings, which further extend the duration.

 

It is important to note that these timeframes are approximate and can vary depending on the specific circumstances of each case. Timely submission of required documents, prompt responses, and cooperation from all parties involved can contribute to a more efficient process.

 

8. Q: Can I appeal a UDRP decision?

 

A: Yes, it is possible to appeal a UDRP decision, although the avenues for appeal are limited. The Uniform Domain Name Dispute Resolution Policy (UDRP) itself does not provide a specific mechanism for appealing a decision. However, there are two main avenues that a party can explore if they are dissatisfied with the outcome of a UDRP proceeding:

 

1. Court Proceedings: The complainant or the respondent can choose to initiate legal proceedings in a court of competent jurisdiction to challenge a UDRP decision. This typically involves filing a lawsuit related to the domain name dispute, seeking a review of the UDRP decision and potentially requesting different or additional remedies. The court proceedings are separate from the UDRP process and follow the applicable laws and procedures of the jurisdiction where the lawsuit is filed.

 

2. Request for Reconsideration: In certain cases, the complainant or respondent may be able to submit a request for reconsideration or review of the UDRP decision to the relevant dispute resolution service provider. The request for reconsideration typically involves pointing out procedural errors, demonstrating new evidence that was not available during the initial proceedings, or arguing that the panel made a manifest error in their decision. The acceptance of a request for reconsideration and the specific grounds on which it can be made vary among different dispute resolution service providers.

 

It’s important to note that the availability of appeals and the specific procedures for appeal may differ depending on the dispute resolution service provider chosen and the applicable rules they follow. It is advisable to consult with a trademark attorney or intellectual property professional who can guide you on the best course of action based on the specific circumstances of your case and the jurisdiction in which the dispute is being resolved.

 

Additionally, it’s worth noting that any appeal or legal action pursued beyond the UDRP process involves additional time, cost, and potential complexities.

 

9. Q: How much does it cost to file a UDRP complaint?

 

A: The cost of filing a UDRP complaint can vary depending on several factors, including the dispute resolution service provider chosen, the complexity of the case, and whether you engage the services of a trademark attorney or intellectual property professional. Here are some cost considerations:

 

1. Dispute Resolution Service Provider Fees: Each dispute resolution service provider has its own fee structure for handling UDRP complaints. These fees typically cover the administrative costs associated with the proceedings, including the appointment of panelists, case administration, and decision-making. The fees can range from a few hundred to a few thousand dollars. It is advisable to review the fee schedules of different providers to determine the most appropriate option for your specific case.

 

2. Attorney or Professional Fees: If you choose to engage the services of a trademark attorney or intellectual property professional to assist with your UDRP complaint, their fees will be an additional cost. The fees charged by attorneys or professionals can vary based on their experience, expertise, and the scope of their involvement in the UDRP process. It is recommended to discuss the fee structure and services provided with your chosen attorney or professional before proceeding.

 

3. Additional Costs: Depending on the complexity of the case, there may be additional costs associated with gathering evidence, conducting research, and preparing the necessary documentation for the UDRP complaint. These costs can include expenses related to trademark searches, evidence collection, and professional consultations.

 

It is important to carefully consider the costs involved in filing a UDRP complaint and weigh them against the potential benefits and value of the disputed domain name. Consulting with a trademark attorney or intellectual property professional can help you assess the costs and benefits, provide a clearer understanding of the specific fees involved, and assist you in preparing a comprehensive and effective UDRP complaint.

 

Please note that the information provided here is a very general overview, and the actual costs may vary based on individual circumstances and the chosen dispute resolution service provider or legal counsel.

 

10. Q: Can a UDRP complaint be filed against a country code top-level domain (ccTLD)?

 

A: Generally, a UDRP complaint cannot be filed against a country code top-level domain (ccTLD) such as .us, .uk, .de, or .fr. The UDRP, which stands for Uniform Domain-Name Dispute-Resolution Policy, is a policy specifically created for generic top-level domains (gTLDs) like .com, .net, and .org, among others.

 

Each country establishes its own policies and procedures for resolving domain name disputes within its ccTLD. These policies may vary and may have their own dispute resolution mechanisms. If you wish to address a domain name dispute involving a ccTLD, you will need to familiarize yourself with the specific regulations and procedures established by the country responsible for that ccTLD.

 

Some ccTLDs have adopted similar dispute resolution policies to the UDRP, while others may rely on local courts or alternative dispute resolution methods. It is important to research and consult the relevant registry or authority responsible for the specific ccTLD to understand the applicable dispute resolution processes and requirements.

 

11. Q: Can a UDRP complaint be filed for a domain name that was registered before the trademark was established?

 

A: Yes, it is possible to file a UDRP complaint for a domain name that was registered before the establishment of the trademark. However, the success of the complaint will depend on various factors, including the specific circumstances of the case and the evidence presented.

 

To succeed in a UDRP complaint, the complainant must demonstrate that the domain name meets the following three criteria:

 

1. Identical or Confusingly Similar: The complainant must show that they have rights to a trademark that is identical or confusingly similar to the disputed domain name. While the UDRP does not require prior trademark registration, the complainant must establish their trademark rights through common law rights, acquired distinctiveness, or other means.

 

2. No Legitimate Rights or Interests: The complainant must demonstrate that the respondent (the current domain name holder) has no legitimate rights or interests in the domain name. If the domain name was registered before the establishment of the trademark, the complainant may need to provide evidence to show that the respondent had knowledge of the complainant’s rights or that the domain name is being used in bad faith.

 

3. Registered and Used in Bad Faith: The complainant must prove that the domain name was registered and is being used in bad faith. While the UDRP provides a non-exhaustive list of circumstances that indicate bad faith, it is important to present evidence that supports the claim of bad faith registration or use, such as an intention to profit from the reputation of the complainant’s trademark.

 

If the complainant can establish these elements, even if the domain name was registered prior to the establishment of the trademark, they may have a valid UDRP complaint. It is essential to gather compelling evidence, consult with a trademark attorney, and carefully present your case to the chosen dispute resolution service provider.

 

Please note that the specific requirements and interpretations of the UDRP may vary based on the dispute resolution service provider selected, and the outcome of the complaint will depend on the UDRP panel’s assessment of the evidence and arguments presented.

 

12. Q: Can a UDRP complaint be filed for domain names used for non-commercial purposes?

 

A: Yes, a UDRP complaint can be filed for domain names used for non-commercial purposes, as long as the other requirements of the UDRP are met. The UDRP does not make a distinction based on the commercial or non-commercial nature of the domain name use when determining the eligibility for filing a complaint.

 

The key factors for filing a successful UDRP complaint are:

 

1. Identical or Confusingly Similar: The complainant must demonstrate that they have rights to a trademark that is identical or confusingly similar to the disputed domain name, regardless of whether the domain name is used for commercial or non-commercial purposes.

 

2. No Legitimate Rights or Interests: The complainant must show that the respondent (the current domain name holder) has no legitimate rights or interests in the domain name. This requirement applies irrespective of the nature of the domain name’s use.

 

3. Registered and Used in Bad Faith: The complainant must establish that the domain name was registered and is being used in bad faith. The UDRP provides a non-exhaustive list of circumstances indicating bad faith, and it applies regardless of the commercial or non-commercial nature of the domain name’s use.

 

It is important to note that the UDRP was primarily designed to address cases of cybersquatting and trademark infringement, regardless of whether the domain name is used for commercial or non-commercial purposes. The focus is on protecting trademark rights and preventing abusive registrations and use of domain names.

 

When filing a UDRP complaint for a domain name used for non-commercial purposes, it is essential to provide clear evidence demonstrating the elements required by the UDRP, such as the existence of a trademark, lack of legitimate rights or interests, and bad faith registration or use.

 

13. Q: Is there a statute of limitations for filing a UDRP complaint?

A: The UDRP (Uniform Domain-Name Dispute-Resolution Policy) does not specify a specific statute of limitations for filing a UDRP complaint. However, it is important to note that the UDRP requires that the complainant must establish certain elements, including proving that they have rights to a trademark and that the domain name at issue is identical or confusingly similar to their trademark.

 

In practice, the timeliness of filing a UDRP complaint is an important consideration. Delay in filing a complaint can potentially weaken the complainant’s case, as it may be perceived as an implied consent or acceptance of the domain name’s registration and use. Additionally, the longer the delay, the more challenging it may become to gather evidence and demonstrate bad faith registration or use of the domain name.

 

While there is no specific time limit prescribed by the UDRP itself, some panelists and dispute resolution service providers may consider the concept of laches, which refers to an unreasonable delay in asserting one’s rights. If the complainant unreasonably delays filing a UDRP complaint, it can affect the panel’s determination of whether the complainant has acted in a timely manner to protect their rights.

 

It is generally advisable to file a UDRP complaint promptly after becoming aware of the potential domain name dispute and gathering sufficient evidence to support the claim.

 

Please note that the absence of a specific statute of limitations in the UDRP does not preclude other legal avenues or time limits that may apply in national jurisdictions. Therefore, it is important to consider the applicable laws and regulations of the jurisdiction relevant to the dispute in case alternative legal actions are being contemplated.

 

14. Q: Can a UDRP complaint be filed for a domain name that consists of generic terms?

 

A: Yes, a UDRP complaint can be filed for a domain name that consists of generic terms. However, successfully winning a UDRP complaint for a domain name comprised of generic terms can be more challenging compared to cases involving distinctive or trademarked terms.

 

In order to prevail in a UDRP complaint involving a domain name comprised of generic terms, the complainant must demonstrate that the domain name meets all three elements required by the UDRP:

 

1. Identical or Confusingly Similar: The complainant must show that they have rights to a trademark or other relevant intellectual property rights that are identical or confusingly similar to the disputed domain name. However, if the domain name consists of generic terms, it is less likely that the complainant will possess exclusive rights to those terms.

 

2. No Legitimate Rights or Interests: The complainant must establish that the respondent (the current domain name holder) has no legitimate rights or interests in the domain name. This can be more difficult when the domain name consists of generic terms, as others may have legitimate reasons to use such terms in their domain names.

 

3. Registered and Used in Bad Faith: The complainant must prove that the domain name was registered and is being used in bad faith. This requirement can be challenging to meet when the domain name consists of generic terms, as it is less likely to be associated with a specific trademark or known brand.

 

To succeed in a UDRP complaint involving a domain name consisting of generic terms, the complainant may need to provide compelling evidence of additional factors indicating bad faith, such as a pattern of abusive registrations or evidence of intent to deceive or confuse users.

 

15. Q: Can the respondent challenge a UDRP complaint?

A: Yes, the respondent can submit a response to the UDRP complaint, presenting their side of the case and defending their rights to the domain name. The response is an opportunity to refute the complainant’s claims.

 

A UDRP complaint refers to a legal filing made by a trademark owner to resolve a domain name dispute through a specific administrative process known as the Uniform Domain-Name Dispute-Resolution Policy (UDRP). The UDRP is a policy established by the Internet Corporation for Assigned Names and Numbers (ICANN) to provide a streamlined and cost-effective means of resolving disputes related to domain name registrations.

 

When a trademark owner believes that a domain name registered by another party infringes upon their rights or is being used in bad faith, they can initiate a UDRP complaint. The complaint sets forth the allegations and arguments of the trademark owner, aiming to demonstrate that they have a legitimate claim to the disputed domain name.

 

Upon filing a UDRP complaint with an approved dispute resolution service provider, the provider reviews the complaint and initiates the UDRP process. This process typically involves notifying the respondent (the party who registered the disputed domain name) of the complaint, allowing them an opportunity to respond.

 

During the UDRP proceedings, both parties present their arguments, supporting evidence, and legal positions to a panelist or panel of experts assigned by the dispute resolution provider. The panelist(s) assesses the case based on the requirements outlined in the UDRP, including factors such as the similarity between the domain name and the complainant’s trademark, the respondent’s rights or legitimate interests in the domain name, and evidence of bad faith registration and use.

 

Upon reviewing the arguments and evidence presented, the panelist(s) renders a decision, either ordering the transfer or cancellation of the disputed domain name or rejecting the complaint. The decision is binding on both parties, and the losing party may have limited options for challenging the decision.

 

The UDRP provides a streamlined and alternative method for resolving domain name disputes outside of traditional litigation, offering a more efficient and cost-effective avenue for trademark owners to protect their rights in the online space.

UDRP DEFINITIVE RESOURCE LIST

At this point, it should be rather self-evident that the process of filing or answering to a domain name dispute is a complex and variable process. The following is a comprehensive list of resources pertaining to both the actual Domain Name Dispute Resolution Policy (UDRP) and other relevant bodies and governing authorities.

UDRP

Uniform Domain Name Dispute Resolution Policy (UDRP)

Uniform Domain Name Dispute Resolution Rules

UDRP AUTHORIZED DISPUTE PROVIDERS

ASIAN DOMAIN NAME DISPUTE RESOLUTION CENTRE

• UDRP CENTRE
• CASE DECISIONS
• ACDR SUPPLEMENTAL RULES

ARAB CENTER FOR DISPUTE RESOLUTION

• UDRP CENTRE
• CASE DECISIONS
• ACDR SUPPLEMENTAL RULES

CANADIAN INTERNATIONAL INTERNET RESOLUTION CENTRE

• UDRP CENTRE
• CASE DECISIONS
• CIIRC SUPPLEMENTAL RULES

CZECH ARBITRATION COURT

• UDRP CENTRE
• CASE DECISIONS
• CAC SUPPLEMENTAL RULES

THE FORUM

• UDRP CENTRE
• CASE DECISIONS
• SUPPLEMENTAL RULES

WORLD INTELLECTUAL PROPERTY ORGANIZATION (WIPO)

• UDRP CENTRE
• CASE DECISIONS
• WIPO SUPPLEMENTAL RULES