Suppose your company name was IntelliFox, and your business sold children’s learning software online. You would not be delighted if someone registered <intellifox.com> and sold children’s books, or worse, if they registered <intellifoxxx.com> and sold porn. This is where the UDRP comes in.
The UDRP is the international legal framework used for domain name disputes internationally. If someone registers a domain name that is confusingly similar to one of your registered trademarks, you can use the UDRP to help take ownership of a domain name which was registered in bad faith to your disadvantage.
The Uniform Domain Name Dispute Resolution Policy is essentially a treaty with force in almost every country on the globe, requiring domain name registrars to comply with decisions made with an approved arbitration provider. The most notable and used provider is the World Intellectual Property Organization (WIPO). While headquartered in Geneva, Switzerland, WIPO in recent years has required that 100% of disputes must be submitted electronically, allowing for ultimate flexibility in resolving domain name disputes.
What the UDRP is.
The UDRP is a set of rules applied by the three approved arbitration providers in the world for resolving domain name disputes. The UDRP process was designed to be a quick and easy way (relative to standard litigation) of determining whether or not a domain name owner is cybersquatting on a domain. The UDRP limits results to two options: whether or not the domain name ownership is transferred to the trademark owner. No UDRP arbitration provider will resolve any matters of monetary damages, so if one is seeking monetary damages, the UDRP would not be the vehicle.
UDRP: Process and Procedure.
Typical UDRP cases can be resolved within 45 days of the filing of a complaint. WIPO charges $1500.00 USD for one arbitrator in a case involving 1-5 domain names, and $4000.00 USD for 3 arbitrators hearing a case involving 1-5 domain names. Click here for a more detailed schedule of fees. In addition to WIPO fees, I personally have seen legal fees for a UDRP action ranging from $3500.00 USD to $15,000.00 USD. Many lawyers do offer a flat fee for this service.
Here is a rough timeline for a UDRP action:
- Day 1 – Complainant files an action
- Day 21 – Respondent has 20 days to file an answer. Respondent will default if no response is filed within the 20 day window.
- Day 26 – The arbitration provider has 5 days to appoint a panel to review the complaint and response.
- Day 40 – After a panel has been appointed, the panel has 14 days to make a decision.
- Day 43 – The panel has 3 days to inform the parties of the decision.
- 10 Days Later – The relevant domain registrar will put the panel decision into effect, canceling or transferring the domain name ownership accordingly.
For the actual text of the Rules for the UDRP, click here.
Elements of a Successful UDRP Claim.
For a complainant to succeed, they must establish all of the following:
- That respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- That respondent has no rights or legitimate interests in the domain name; and
- That respondent registered the domain and uses the domain in bad faith.
A relatively significant body of law exists behind each of these three elements, so they will be discussed more in depth in the future. I will slightly touch upon the element that I see most confusion about: bad faith.
Bad faith is easily established when the owner of a domain name registered a domain name which is confusingly similar to a trademark, after the trademark was registered. This is because the UDRP sees a trademark registration as a sufficient warning to the public, a “Hey, don’t even think about registering a domain name similar to this trademark!” message. Unfortunately, anything less than a trademark registration prior to an infringing domain name registration will be difficult to prove as “bad faith.” In these situations, only a few cases exist where bad faith was established; only if the respondent was proven to have clear, blatant knowledge of the UDRP complainant, and it was proven that respondent’s goal was to take advantage of confusion between the domain name and any trademark or branding rights of the complainant.
I will discuss the other elements in depth in the future, thanks for reading my blog!