gTLD domain name dispute eg .com

If your domain name dispute concerns a gTLD (eg .com, .org,.net, .biz, .info, .name), then you might be able to recover the domain name through an arbitration procedure known as the Uniform Dispute Resolution Policy, otherwise known as the UDRP, set up by the internet naming authority ICANN. Most .com and other gTLD domain dispute cases are dealt with this way.

Proving your case under ICANN’s UDRP

To succeed with a UDRP complaint, you have to prove the following:

First, that you have a trademark which is identical or confusingly similar to the domain name. The trademark doesn’t have to be registered. You can also rely on "common law rights" ie evidence of reputation and goodwill which you build up in the name. Frequent pitfalls in UDRP complaints are include reliance on a registered trademark which isn’t in fact in the complainant’s name (eg owned by a group company). And failure to supply the level of information and evidence needed in support of a claim to an unregistered trademark.

Second, that the registrant / respondent has no rights or legitimate interests in the domain name and that the domain name was registered and is being used in bad faith. The UDRP provides non-exhaustive examples of both lack of rights or legitimate interests and of registration and use in bad faith.

Typical .com (and other gTLD) domain name dispute cases more likely to go against the registrant: Registering a domain name and immediately offering it for sale to a trademark owner. Registering a competitor’s name and forwarding to the registrant’s own competing site.

Typical domain dispute cases more likely to go in favour of the registrant: Registering a wholly descriptive domain name and using it exclusively in relation to that descriptive purpose (eg genuinely using apples.co.uk to sell apples rather than computers). Registering a domain name and using it for a genuine business without reference to the complainant eg before the complainant ever started using the name.

And of course there are many grey areas.

Obviously circumstances will vary widely but as domain name lawyers and panellists we know well that you have to provide sufficient information and evidence to cover all of the points required under the UDRP. Otherwise the UDRP proceeding will fail.

Appeals under ICANN’S UDRP

There is no provision within the UDRP for appeals. The only option is to go to court assuming there is a legal basis to do so. It’s therefore important to get the UDRP complaint right first time as there’s no second chance (except in rare cases eg something critical happens after the original UDRP complaint is filed).

ICANN UDRP providers and fees

There are a number of bodies accredited to handle UDRP cases including the World Intellectual Property Organisation (WIPO) and the National Arbitration Forum (NAF). The official fees are set by the providers themselves. The fee for filing a UDRP complaint based on a single domain name are currently around US$1300 - $1500. There is no fee to file a response. The official fees exclude the legal costs involved in preparing complaints / responses.

Timescale for ICANN UDRP complaints

The timescale for resolution of UDRP cases tends to be six to eight weeks.

Outcome of ICANN UDRP complaints

If you are a successful UDRP complainant, the normal outcome is transfer of the domain name in dispute - usually the main objective of those filing UDRP proceedings. You can’t recover damages or costs.

ICANN’S UDRP versus court

An alternative to the UDRP is to go to court based on a legal cause of action such as passing off or trademark infringement. But the UDRP has the advantage of being far quicker and cheaper than undertaking legal proceedings. And it avoids difficulties of working out which country’s courts have jurisdiction and of enforcing court awards when the domain name registrant is abroad.

How can we help with UDRP disputes?

We have acted for parties in dozens of UDRP cases and (thus far!) we’ve always won. We don’t file UDRP cases until we think we have enough evidence to win. Adam Taylor of Adlex Solicitors is also a UDRP panellist and so we have a fairly good idea of what it takes. In any case, our objective is always to resolve the case without the need to resort to UDRP or indeed court. For a free initial chat and more information about our expert domain name legal consultancy, call Adam Taylor on +44 (0) 207 317 8404 or email.

See also:

domain name disputes homepage
UK domain name dispute
eu domain name dispute
non .uk ccTLD domain name dispute
domain name dispute faqs