Uniform Dispute Resolution Policy (UDRP) Complaints
What is the UDRP?
The UDRP (abbreviation for Uniform Dispute Resolution Policy) is the primary domain name dispute resolution policy for resolving gTLD disputes, although additional measures are available. It was set up following a report by the United Nations World Intellectual Property Organization (WIPO) on the misuse of trade marks in domain names.
This recommended the establishment of a mandatory arbitration procedure to deal with ‘abusive’ registrations – one that might be quicker and less expensive than a court case.
Official ICANN-authorised dispute resolution service providers manage UDRP disputes. See below.
What kinds of domain names are covered by the UDRP?
The UDRP applies to traditional “gTLD” domain names such as .com, .net. It also covers the “new gTLDs” (e.g., .club, .loan etc) as well as some country domains and other kinds of domain names such as “uk.com”.
What makes the UDRP legally binding?
The contract under which someone registers a domain name. When the UDRP is included, they agree to participate in UDRP arbitration in the event of a dispute. Also, under the UDRP, registering a relevant domain name requires the person or company to ‘represent and warrant’ that doing so ‘will not infringe upon or otherwise violate the rights of any third party.
Where do you file a UDRP complaint and how much does it cost?
There are a number of bodies accredited to handle UDRP cases. These include the World Intellectual Property Organisation (WIPO) and the National Arbitration Forum (NAF). The providers set the official fees. Generally, they charge complainants around US$1300 – $1500 fee to file a UDRP complaint for a single domain name. But they charge more (around $4,000) if the complainant opts for a 3-person panel (rather than the normal single-person panel). Usually the respondent only pays if it requests a 3-person panel. If so, the fee is split equally between the parties. The official fees exclude the legal costs involved in preparing complaints / responses.
What do you have to prove?
To make a successful claim under the UDRP, a company or individual must establish three things:
- That the domain name in dispute is the same as, or confusingly similar to, one of their registered or unregistered trade marks, such as an actively used business name. The business name category can extend to performers, writers and artists whose personal name has brand value.
- That the domain name registrant does not have any legitimate rights to it, e.g. there is no “bona fide” offering of goods or services.
- That the registered domain name was registered is being used in bad faith – i.e. to illicitly target the trade mark owner in some way.
For the purposes of the UDRP, bad faith is likely to be established if the domain name was initially registered, and has since been used, for the sole purpose of:
- Selling or renting it back to the owner of the related trade mark at a profit, even if they have not actually approached the trade mark owner at the time of the complaint
- To prevent the owner of the related trade mark from using it
- To disrupt the trade mark owner’s business
- To confuse potential customers looking for the trade mark owner’s business
The above is not an exhaustive list. Other factors can be taken into consideration, such as registrants being uncooperative, not responding to legal emails or letters, or registering multiple questionable domain names.
A domain name owner who can demonstrate legitimacy has a good chance of defending their case, – if, for example, they are using a non-misleading domain name to operate a genuine fan site that is not being used for commercial gain.
Obviously, circumstances will vary widely. But, in any case, you have to provide sufficient information and evidence to cover all of the points required under the UDRP. Otherwise the UDRP complaint will fail.
How long does it take?
In our experience, UDRP cases tends to be take anywhere from six to ten weeks, depending on whether they are contested and how complicated they become.
What are the possible outcomes?
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. Very occasionally the panellist will cancel the domain name. You can’t recover compensation or legal costs.
Any necessary changes to the registration of a domain name will be made by the registrar of the domain name within ten days of a decision.
UDRP decisions are sometimes overturned in the courts. However, it is worth noting the registrant cannot take transfer it to anyone else for the duration of the domain name dispute process.
The UDRP is not dependent on legal jurisdiction and can be used internationally, i.e., it doesn’t matter where the registrant is based.
UDRP decisions are public by default.
Are previous UDRP cases relevant?
Potentially yes – but they now run into the tens of thousands! So, apart from some well-known ground-breaking UDRP decisions, it’s more important to be aware of the general trends than individual cases. Fortunately, WIPO have prepared a very detailed and thorough case overview, available on its website. This explains areas of consensus, and indeed division, amongst panellists. It’s important to be aware of these issues and deploy them in UDRP filings, whether by the complainant or respondent.
Can the loser appeal?
No. 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. And often there isn’t. It’s therefore important to get the UDRP complaint right first time. You won’t get a second chance – except in rare cases. For example, if you discover something crucial that you couldn’t have known about when you filed the original UDRP complaint).
UDRP v 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 can hear the dispute and enforcing court awards. This is particular problem when the domain name registrant is abroad. These days, the vast majority of domain name disputes go to the UDRP rather than court.