What is the UDRP?
The UDRP stands for Uniform Domain Name Dispute Resolution Policy; an administrative procedure based on a uniform set of guidelines established by The Internet Corporation for Assigned Names and Numbers (ICANN). The procedure acts as a quick, cheap and alternative means to adjudicate domain name disputes without the need for court litigation.
To prevail under the UDRP, the Complaining party (Complainant) is required to demonstrate:
Rights in a mark and that the mark is identical or confusingly similar to the disputed domain name
That the domain owner (Respondent) has no right or legitimate interest in the disputed domain name
That the domain name was registered and used in bad faith
If the Complainant fails to prove all three elements, the Respondent will prevail and retain its domain registration.
What is the procedure and timescales under the UDRP?
A complaint can be filed with a number of accredited providers, with the two most popular being the World Intellectual Property Organization and FORUM.
After a complaint has been filed and checked for compliance (5 days), the Respondent will be informed of the dispute against its domain name, and given 20 days to respond to the complaint.
An Administrative Panel made up of one of three persons will be appointed to decide the dispute based on the written submissions of both parties. The Panel will be given 14 days to make its decision.
Once the decision has been made, this will be communicated to the Parties and the concerned Registrar who will be given the authority to implement the decision after 10 days have expired.
The remedies under the UDRP are limited to Transfer or Cancellation of the disputed domain name.
As a trademark owner, do i need to submit to the UDRP to dispute ownership of a domain?
No. The UDRP is not the only means of combating the abusive registration of domain names - although it tends to be the preferred option due to its low cost and quick turn around. In the U.S for example, a party may file a complaint under the Anticybersquatting Consumer Protection Act (ACPA).
As a domain owner, why must i submit to the UDRP?
Your obligation is a contractual one. By means of your registration agreement which governs your possession of a domain name, you are obligated to conform to the UDRP procedure in the event of any dispute raised against your domain name. For example, the Registrar Godaddy provides under clause 6 of its Registration Agreement:
“You agree to be bound by our current Dispute Resolution Policy. This policy is incorporated herein and made a part of this Agreement. You can view the Uniform Domain Name Dispute Resolution Policy online.”
Irrespective of your location, the domain name is subject to the jurisdiction of the UDRP.
Do I have to respond to a complaint?
Despite having to submit to the UDRP, the filing of a response is discretionary. If you fail to provide a response within the applicable deadline, you will be considered to be in default, and the case will proceed without your involvement. The Administrative Panel appointed will decide the case solely on the merits of the complaint.
Do I need to hire a lawyer?
The UDRP is designed to be accessible to all parties without the need for legal assistance. In fact, many domain owners have successfully retained their domain registrations through self-representation. The rules are available at https://www.icann.org/resources/pages/help/dndr/udrp-en and further guidance can be found at https://www.wipo.int/amc/en/domains/search/overview3.0/. The assistance of a lawyer will certainly be valuable when addressing the intellectual property aspects of a case, however, what is most important is that the legal representative be familiar with UDRP jurisprudence and procedure. Alternative brand protection service providers such as CSC Digital Brand Services and Nameshield file large numbers of UDRP cases on behalf of trademark owners and some law firms are well known for specialising in this area.
What is the relationship between the UDRP and court proceedings?
The World Intellectual Property Organization which serves as one of the forums to administer the UDRP states:
“By design, the UDRP system preserves parties’ court options before, during, and after a UDRP proceeding…the UDRP does not bar either party from seeking judicial recourse.” This is confirmed under paragraph 4(k) of the UDRP.
National courts are not bound by UDRP decisions, although very few are overturned by later court decisions.
What are the limitations of the UDRP?
The scope of the UDRP procedure is limited to clear-cut cases of abusive registration (also known as “cybersquatting”). This involves a more limited assessment than trademark infringement.
Currently all generic top level domains (gTLDs) such as .com, .net, .web and a small selection of Country code top level domains (ccTLDs) are subject to the UDRP. However, some countries including the United Kingdom, China and many other European countries have adopted their own administrative procedures which are similar to the UDRP. Our legal experts are conversant in all national dispute resolution policies.