What is the Uniform Domain Name Dispute Resolution Policy?

The Uniform Domain Name Dispute Resolution Policy (or in short, the UDRP) is a special administrative procedure for the resolution of conflicts between a domain name and  trade marks. The UDPR was established and adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) in 1999, based on a report issued by the World Intellectual Property Organisation (WIPO). The WIPO Arbitration and Mediation Center (the WIPO Center) is the leading provider of dispute resolution services under the UDRP but there are a few other providers in different countries as well.

To what disputes is the UDRP applicable?

The UDRP applies to disputes involving trade marks and domain names. What this means is that the dispute resolution procedure can generally only be initiated by trade mark owners (or their subsidiaries, licensees, etc., subject to some requirements). Obviously, in order to initiate the procedure, you have to be able to prove your rights in the trade mark.

In terms of types of domain names, the UDRP currently applies to second-level domains under all generic Top-Level Domains (gTLDs) like .com, .net, .org, etc., some country code Top-Level Domains (ccTLDs), and to all new gTLDs (.xyz, .online, .top, etc.). As their name suggests, gTLDs are generic “endings” of your domain name, the most famous being “.com”, although they may have a specific meaning, which conceptually relates to your brand. For example, “.book” could be used by businesses offering books. ccTLDs, on the other hand, correspond to a specific country or territory and sometimes you have to be a national of or your business needs to be established in the territory in order to be able to register one of those. For example, this is the case with the “.eu” ccTLD, where a variation of the UDRP applies.

Is the UDRP mandatory for domain names?

The UDPR has been adopted by all ICANN-accredited registrars and some ccTLD registries.  It is made enforceable through a contract signed between the registrar/registry and the “customer” (i.e. the registrant of the domain name). Therefore, when you buy a domain name from Namecheap or GoDaddy, for example, and accept the terms and conditions without reading them, you are actually submitting yourself to the UDRP, should there be a conflict with a trade mark owner.

In case of a dispute, the trade mark owner will choose a dispute resolution provider, such as the WIPO Center, and the UDRP will be applied whether the domain name owner decides to participate or not.

What should I have in mind when filing a complaint under the UDRP?

If you are a trade mark owner and you wish to file a complaint under the UDRP, the first thing you need to do is consult your trusted domain name lawyer. Your lawyer will analyse your case and calculate the chances of success in a potential dispute. If you are lucky and the chances are good, you may choose a dispute resolution provider, such as the WIPO Center, for example. There are quite a few formal and substantive requirements for filing a complaint, but the most important questions you need to ask yourself are the following:

1. Is my trade mark included or recognisable in the domain name? – this is the most fundamental requirement and the one, which gives you “standing” to file the complaint; if your trade mark is not in the domain name, there is no dispute basically.
2. Was my trade mark registered before the domain name? – if your trade mark was registered after the domain name, your complaint will fail before it has even started.
3. How is the domain name used and does it hurt my brand/business? – the other fundamental requirements are that the domain name has been registered and is used in bad faith, and that the registrant does not have any rights of legitimate interests in it. 

Having said the above, it is true that there are some nuances and exceptions in specific circumstances. Therefore, even if you answered “No” to some or all of the questions above, it does not mean your complaint will surely fail. That is why it is important to consult with a lawyer, who is an expert in domain names in order to evaluate the specifics of the case and your chances of success. If you need help with defending your brand because someone has registered it as a domain name, do not hesitate to contact us through here.

Who will decide my domain name dispute?

Dispute resolution providers like the WIPO Center are only responsible for administering the case, they do not decide it. The disputes are decided by independent experts, called “panelists” and each dispute resolution provider has its own list of panelists to choose from. Depending on the provider and the applicable policy, panelists could be from a specific territory but in the case of the UDRP, experts are “sourced” from around the world.

How much does it cost to file a domain name complaint?

We will take the WIPO Center as an example here as well, but other providers might have very similar fees. At the WIPO Center, the official fee depends on: (i) how many domain names your complaint involves; and (ii) whether you wish your dispute to be decided by a single-member panel or a three-member panel. In the grand majority of cases, the dispute involves between 1 and 5 domain names and is decided by a single panelist. In this case, the WIPO Center’s fee is USD 1,500, where USD 1,000 goes to the panelist and USD 500 goes to the WIPO Center.

On top of the official fees, you will need to add lawyer’s fees for drafting and filing the complaint. It is not mandatory to be represented by a legal professional but it is highly advisable because while the procedure looks easy, only an expert in domain names can advise and guide you to a successful resolution.

How do I file a domain name complaint?

The domain name dispute resolution procedure is carried out entirely online and the whole process normally takes between two and three months. Of course, this timeline could be extended where there are suspensions for negotiations, supplemental filings, panel orders, etc. but in most cases it is pretty quick and straightforward.

We hope the above information has answered if not all, at least the most important questions related to the UDRP, but if you want to know more, leave us a comment below or contact us through this form and we will be happy to help!