UDRP domain dispute
If your domain name dispute concerns a gTLD (e.g. .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. The UDRP also applies to the "new gTLDs" as well as to some country domains and other kinds of domain names such as "uk.com".
Proving your case under ICANN's UDRP
To succeed with a UDRP complaint, you have to prove the following:
First, that you have a trade mark which is identical or confusingly similar to the domain name. The trade mark doesn't have to be registered. You can also rely on "common law rights" i.e. evidence of reputation and goodwill which you build up in the name. Frequent pitfalls in UDRP complaints are include reliance on a registered trade mark which isn't in fact in the complainant's name (e.g. owned by a group company). And failure to supply the level of information and evidence needed in support of a claim to an unregistered trade mark.
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 UDRP cases more likely to go against the registrant: Registering a domain name and immediately offering it for sale to a trade mark owner. Registering a competitor's name and forwarding to the registrant's own competing site.
Typical UDRP 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 (e.g. 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 e.g. 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 e.g. 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. If the complainant requests a 3-person panel (rather than the normal single-person panel), it has to pay $4,000; if the respondent requests a 3-person panel, then the $4,000 fee is split evenly between the parties. 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 trade mark 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 Adlex Solicitors can help with UDRP disputes ...
... for a free initial chat and more information, contact Adam Taylor on +44 (0) 207 317 8404 or email.