The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process used for the resolution of disputes in the registration of domain names.
Furthermore, the UDRP was established by the Internet Corporation for Assigned Names and Numbers (ICANN).
The Uniform Domain-Name Dispute-Resolution Policy can be similar to an arbitration proceeding.
Moreover, the UDRP was put into place to resolve all disputes regarding domain names.
The UDRP applies to domain names such as .com, .net, .org, etc.
Additionally, the Uniform Domain-Name Dispute-Resolution Policy is mandatory.
If you register a domain name then you agree to participate in the Uniform Domain-Name Dispute-Resolution Policy.
Ultimately, the Uniform Domain-Name Dispute-Resolution Policy protects domain and trademark owners by ensuring there is a platform to settle disputes.
Why do we need the Uniform Domain-Name Dispute-Resolution Policy?
The goal of the Uniform Domain-Name Dispute-Resolution Policy is to provide an affordable and efficient way of handling domain name disputes.
Without the UDRP, to handle disputes you would likely be forced to enter into a lawsuit with the domain name holder.
Unfortunately, this route would take several months to complete.
Additionally, a lawsuit would also cost several thousand dollars in legal fees.
In contrast, the Uniform Domain-Name Dispute-Resolution Policy is designed to resolve conflicts in as little as 60 days.
Furthermore, the Uniform Domain-Name Dispute-Resolution Policy will likely cost much less than a lengthy civil lawsuit.
The other major problem with an actual lawsuit is jurisdiction issues.
Obviously, anyone from across the globe can register a domain name.
Thus, a dispute could arise from individuals from different countries. If this occurs, it could be a jurisdictional nightmare for a lawsuit.
Alternatively, the Uniform Domain-Name Dispute-Resolution Policy provides a uniform platform where anyone, no matter which country of origin, can resolve domain name conflicts.
Therefore, the Uniform Domain-Name Dispute-Resolution Policy provides a much needed platform to allow domain name owners to settle their conflicts.
What is ICANN?
ICANN is a non-profit organization with the goal of keeping the internet safe, secure, and stable.
Basically, ICANN coordinates the internet. The organization does not control the internet’s content or anything like that.
Rather, ICANN is involved with the evolution of the internet by allowing computers from across the world to connect to each other.
ICANN does this by ensuring that internet addresses are unique.
If the addresses were not unique, then the computers would not be able to find each other and we would have no internet.
Moreover, ICANN is responsible for managing the domain name system.
The domain name system is basically an internet address system.
People use the domain name system so that they can locate websites, send emails, and engage in all of their online activities.
ICANN is responsible for ensuring that the domain name system is running smoothly.
One of the ways they ensure the domain name system is running smoothly is by putting in place the Uniform Domain-Name Dispute-Resolution Policy.
This way, all disputes have a process to get resolved quickly and efficiently.
However, ICANN will not directly participate in any way with any actual dispute.
Under the Uniform Domain-Name Dispute-Resolution Policy that they have set forth, separate providers handle the actual dispute.
Therefore, ICANN is essential to promoting the growth of the internet and keeping it secure.
What is the Uniform Domain-Name Dispute-Resolution Policy Process?
The UDRP process can look like a court hearing, an arbitration proceeding, or even a simple agreement between two parties.
Before beginning the process for yourself, it is important to understand the mandatory administrative proceeding process set forth by the Uniform Domain-Name Dispute-Resolution Policy.
The process takes roughly 60 days to resolve a dispute.
However, the board reserves the right to extend the timeline under certain circumstances.
File a Complaint
The most crucial part of the Uniform Domain-Name Dispute-Resolution Policy process is filing the complaint.
In your complaint you must allege the grounds for your complaint. In order to be successful in your dispute the complaint must establish:
- Your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- You have no rights or legitimate interests in respect of the domain name; and
- Your domain name has been registered and is being used in bad faith. [1]
Additionally, you must lay out the remedies you seek in the proceeding.
The complainant has three days after filing the complaint to serve the respondent.
How Do I Establish Bad Faith?
Without a doubt, the most difficult part of establishing that you have an applicable dispute under the Uniform Domain-Name Dispute-Resolution Policy is proving bad faith. [2]
Under section 4(b) of the UDRP, you can prove bad faith by establishing:
- Circumstances indicating that the respondent has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
- That the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
- That the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
- That by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to the respondent’s web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s web site or location or of a product or service on the respondent’s web site or location. [3]
Thus, it is difficult to establish bad faith under the Uniform Domain-Name Dispute-Resolution Policy.
However, demonstrating bad faith is crucial to the success of your complaint.
Respondent must file an Answer to the Complaint
After you file your complaint, the respondent must file their answer. Much like the complainant, the respondent’s answer has to meet a high bar.
Moreover, the respondent must show why they are entitled to the domain name.
For instance, the respondent can show that they are entitled to the domain name by proving that they had been offering goods or services associated with the domain name before the dispute arose. [4]
Additionally, the respondent can show they are entitled to the domain name by establishing that they are commonly known by their domain name, even if they have not acquired the trademark yet. [5]
Finally, the respondent can show that they are entitled to the domain name by proving that they are using it for noncommercial purposes. [6]
This means that they are not using it for financial gain or attempting to steal consumers from the complainant. [7]
The respondent has 20 days to respond to the original complaint.
Hence, both the complainant and the respondent have high burdens to meet in there introductory documents.
The Complainant Selects a Provider
Under The Uniform Domain-Name Dispute-Resolution Policy, the complainant must select a provider to hear the dispute. ICAAN has created a comprehensive list of providers.
These providers include the World Intellectual Property Organization (WIPO), the National Arbitration Forum, the Asian Domain Name Dispute Resolution Centre, The Czech Arbitration Court Arbitration Center for Internet Disputes, and the Arab Center for Domain Name Dispute Resolution (ACDR).
Furthermore, the provider plays a major role in solving the dispute.
The Provider Appoints a Panel
After the complainant chooses a provider, the provider will appoint an administrative panel.
The administrative panel will render a decision on the dispute. The selected provider has 5 days to appoint the panel.
The Panel Renders a Decision
After the panel receives all of the necessary information, they will render a decision.
If the panel establishes that the domain name was registered in bad faith, then the panel can order the cancellation of the respondent’s domain name.
The panel has two weeks to make their decision after the panel was appointed.
The Panel Notifies the Parties of its Decision
Once the panel renders their decision, they have three days to notify the parties of their decision.
What Remedies can the Uniform Domain-Name Dispute-Resolution Policy provide?
There are a few different remedies available to you. The Uniform Domain-Name Dispute-Resolution Policy provides that if bad faith is proved, then the respondent’s domain name can be cancelled.
Furthermore, under some circumstances the domain name can be transferred to the complainant.
How Much Does the Uniform Domain-Name Dispute-Resolution Policy Cost?
Unfortunately, the individual who files the complaint is burdened with paying all of the fees associated with the Uniform Domain-Name Dispute-Resolution Policy.
Under rare circumstances, the respondent will have to pay fees if they elect to expand the administrative panel.
The cost of the dispute varies based on the provider that the complainant chooses.
For example, the World Intellectual Property Organization (WIPO) charges roughly $1000 in fees to hear a single domain name dispute.
Alternatively, the National Arbitration Forum can cost roughly $750 in fees for a single domain name dispute.
Therefore, the cost of the Uniform Domain-Name Dispute-Resolution Policy really depends on which provider you choose and how many domain names you are disputing.
Can I still take my Dispute to Court?
In addition to the mandatory administrative proceeding, you have the option to take the dispute to court.
You have the option to file suit before the mandatory administrative proceedings begin or after they commence. Therefore, other legal options are available to you.
Conclusion
ICANN is an important non-profit organization that is responsible for keeping the internet stable, safe, and efficient.
Furthermore, ICANN’s Uniform Domain-Name Dispute-Resolution Policy is an important process that allows a quick and efficient resolution of domain name disputes.
If you have a domain name dispute, then you are entitled to dispute resolution under the Uniform Domain-Name Dispute-Resolution Policy.
Provided you can establish the domain name was registered in bad faith, you can force the individual to cancel their domain or even turn it over to you.
While the Uniform Domain-Name Dispute-Resolution Policy was designed to be efficient, it can be difficult to achieve successful results on your own.
Hiring an experienced and competent attorney is recommended.
Ultimately, having an experienced attorney by your side can best serve to protect your business interests.
[1] Uniform Domain-Name Dispute-Resolution Policy 4(a)
[2] Uniform Domain-Name Dispute-Resolution Policy 4(b)
[3] Id.
[4] Uniform Domain-Name Dispute-Resolution Policy 4(c)
[5] Id.
[6] Id.
[7] Id.
