Domain name disputes most often present themselves when a trademark owner learns that another individual or company is using a domain name/s that is in some meaningful way, confusingly similar (or even identical) to the trademark. Now, in certain circumstances, this is not necessarily the result of a concerted effort by the domain name holder to profit off of the good will of the trademark holder but rather an honest attempt by the domain name owner to legitimately market its services, which happen to correspond to those, sold by the trademark holder. However, when a “Cyber squatter” has purchased the domain name with the sole objective of promoting the competitor’s services or harnessing the reputation of the trademark owner to sell the Cyber squatter’s services, the trademark holder has a legal case to commence a Domain Name Dispute Proceeding.
WHAT IS A UDRP COMPLAINT?
A UDRP complaint refers to a legal filing made by a trademark owner to resolve a domain name dispute through a specific administrative process known as the Uniform Domain-Name Dispute-Resolution Policy (UDRP). The UDRP is a policy established by the Internet Corporation for Assigned Names and Numbers (ICANN) to provide a streamlined and cost-effective means of resolving disputes related to domain name registrations.
When a trademark owner believes that a domain name registered by another party infringes upon their rights or is being used in bad faith, they can initiate a UDRP complaint. The complaint sets forth the allegations and arguments of the trademark owner, aiming to demonstrate that they have a legitimate claim to the disputed domain name.
Upon filing a UDRP complaint with an approved dispute resolution service provider, the provider reviews the complaint and initiates the UDRP process. This process typically involves notifying the respondent (the party who registered the disputed domain name) of the complaint, allowing them an opportunity to respond.
During the UDRP proceedings, both parties present their arguments, supporting evidence, and legal positions to a panelist or panel of experts assigned by the dispute resolution provider. The panelist(s) assesses the case based on the requirements outlined in the UDRP, including factors such as the similarity between the domain name and the complainant’s trademark, the respondent’s rights or legitimate interests in the domain name, and evidence of bad faith registration and use.
Upon reviewing the arguments and evidence presented, the panelist(s) renders a decision, either ordering the transfer or cancellation of the disputed domain name or rejecting the complaint. The decision is binding on both parties, and the losing party may have limited options for challenging the decision.
The UDRP provides a streamlined and alternative method for resolving domain name disputes outside of traditional litigation, offering a more efficient and cost-effective avenue for trademark owners to protect their rights in the online space.
DOMAIN NAME DISPUTE POLICIES
While domain name disputes may in theory end up in a court of law, more often than not, they are governed and adjudicated according to a Domain Name Dispute Policy, the most popular of which is the Uniform Domain Name Dispute Resolution Policy (UDRP),which incidentally, is also the most well-established. It applies to gTLDs (including .com, .org,.net etc.) and fundamentally allows a trademark owner to file a complaint against an alleged squatter and transfer, suspend, cancel and/or ultimately acquire by way of transfer the disputed domain name. Proceedings under the UDRP are both much faster and more importantly, much cheaper, to prosecute than cases brought before a court of law.
Less common, but still not entirely unheard of, are domain name disputes brought under the jurisdiction of the Uniform Raid Suspension System (URS) which is a fairly recent domain name dispute policy. It is even cheaper than the UDRP but employs standards, which render it more challenging for the plaintiff to prevail. Critically, Domain Name Dispute Policies effectively require domain registrars to comply with the decision of the tribunal which rules on the proceedings so the plaintiff (who is successful the vast majority of the time) can easily and rather quickly obtain through transfer the disputed domain name.
ELEMENTS OF A UDRP COMPLAINT
A Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaint typically consists of several major elements. Here are the key components:
1. Complainant’s Identification: The complaint should clearly identify the party filing the complaint, including their name, contact information, and any authorized representative.
2. Domain Name(s) in Dispute: The complaint should specify the domain name(s) that are subject to the dispute, along with their corresponding extensions (e.g., .com, .org, .net).
3. Respondent’s Information: The complaint must provide information about the party who registered the disputed domain name(s), including their name, contact details, and any known aliases.
4. Grounds for Complaint: The complaint should outline the grounds on which the complainant believes they are entitled to the disputed domain name(s). The UDRP provides several grounds for a successful complaint, such as:
a. Confusingly Similar: The complainant should demonstrate that the disputed domain name(s) is/are confusingly similar to a trademark or service mark in which they have rights.
b. No Legitimate Interest: The complainant must establish that the respondent has no legitimate interest in the domain name(s) and has registered or used them in bad faith.
c. Bad Faith Registration and Use: The complainant needs to provide evidence that the domain name(s) was/were registered and is/are being used in bad faith, such as to intentionally attract users for commercial gain or to disrupt the complainant’s business.
5. Supporting Evidence: The complaint should include supporting evidence to substantiate the claims made. This may involve providing trademark registrations, evidence of the respondent’s bad faith conduct, screenshots of relevant website content, and any other relevant documentation.
6. Requested Remedies: The complainant should state the remedies sought, such as the transfer or cancellation of the disputed domain name(s).
7. Compliance with UDRP Rules: The complaint must demonstrate compliance with the UDRP’s procedural requirements, including the appropriate payment of fees and adherence to specified deadlines.
It’s important to note that the specific requirements and procedures for filing a UDRP complaint may vary slightly depending on the particular dispute resolution provider chosen by the complainant. Therefore, it’s advisable to consult the provider’s specific guidelines to ensure compliance.
STEPS TO WINNING A UDRP DOMAIN NAME DISPUTE
UDRP complaints are prosecuted under the auspices of specifically designated service providers including the World Intellectual property Organization (WIPO) and the Forum. As we will see in a later portion of this article, the complainant in a UDRP proceeding has to demonstrate the following three elements to prevail:
- The trademark holder must show that the domain name is identical or confusingly similar to the trademark
- The trademark holder must show that the registrant of the disputed domain name either has no rights or legitimate interests in the use of the disputed domain name
- The trademark holder must show that the domain name was both registered in bad faith and is now being used in bad faith.
If the complainant, or trademark holder can satisfactorily demonstrate that all three of these prongs have been met, he will prevail.
ALTERNATIVES TO A UDRP COMPLAINT
There are alternative avenues available to address domain name disputes instead of or alongside filing a Uniform Domain-Name Dispute-Resolution Policy (UDRP) complaint. Some of these options include:
1. Negotiation and Settlement: The parties involved can attempt to resolve the dispute through direct negotiation and reach a mutually acceptable settlement. This may involve discussing the issue, identifying common interests, and finding a compromise that satisfies both parties.
2. Mediation: Mediation involves the assistance of a neutral third party who helps facilitate communication and negotiation between the disputing parties. The mediator does not make a binding decision but works to guide the parties towards a voluntary resolution.
3. Lawsuit: If the dispute involves significant legal issues or complex circumstances, the complainant may choose to file a lawsuit in a court of law. This option allows for a judicial resolution of the matter, with the court making a binding decision on the dispute.
4. Alternative Dispute Resolution (ADR): ADR methods, such as arbitration or expert determination, provide a private and streamlined process for resolving domain name disputes. In these cases, an independent arbitrator or expert is appointed to review the evidence presented by both parties and make a binding decision.
5. Complaints to Registrars: Complainants can directly approach the domain name registrar responsible for managing the disputed domain name(s). Registrars often have their own dispute resolution processes, and filing a complaint with them can potentially lead to a resolution without the need for a UDRP complaint.
6. Domain Name Registry Dispute Resolution: Some top-level domain (TLD) registries have their own dispute resolution procedures, which may differ from the UDRP. These procedures are specific to the respective TLD and can be an alternative option for resolving disputes involving domain names within those TLDs.
It’s important to note that the effectiveness and availability of these alternatives may vary depending on the specific circumstances of the dispute, the applicable domain name policies, and the willingness of the parties involved to engage in alternative methods of resolution.
UDRP FUNDAMENTALS: NAMES AND DOMAIN NAME DISPUTES
Section 4(a)(i) of the UDRP dictates that the complainant must demonstrate to the panel that he has existing trademark rights and that the disputed domain name is confusingly similar to the trademark, either by virtue of it being identical or included within the domain name. Trademark rights are conferred either on the federal level with a registration from the United States Patent and Trademark Office (USPTO) or through the use of the trademark in commerce via Common Law rights. The extent to which the trademark is considered a “strong” mark, vis-à-vis descriptiveness issues and dilution will play at list a minor role in determining any bad faith intentions of the Respondent.
In the event that the trademark holder has rights only under common law and not through a USPTO Registration, the trademark holder (who is the complainant) may marshal forth evidence of his rights by alluding to the amount of time the mark has been used in commerce, the amount of money, to date, spent on advertising, media coverage, venture capital raised, sales figures, etc. The complainant should work hard to demonstrate, if possible, a geographically expansive use of the mark and lay claim to as much territory as possible in order to preclude domain name rights and usage by the competitor in different parts of the country.
Remember, the “confusing similarity” feature of this prong does not demand that the trademark and disputed domain name are identical. Rather, the test is whether or not the domain name would pose a sufficient degree of confusion in the minds eye of the public (or consumer depending on specifics) so that the owner of the Mark is disadvantaged and harmed. Of course, the more distinct the trademark, the more “similar” the disputed domain name needs to be in order to lose under this first element. Simply misspelling the trademark and incorporating it into the domain name does not obviate the problem of confusion and therefore, the defendant-domain name holder must meaningfully vary from the trademark in order to defend against this claim.
Legitimate Interests in a Domain Name:
Next, the Complainant must demonstrate to the panel that the Respondent/Defendant does not actually have any legitimate interest in the domain name. The idea here is that if the defendant does not have a legitimate purpose for its use, he must only have registered it for the illegitimate purpose of harming (in some manner) the trademark holder. This is a challenging burden to meet and therefore, the Complainant does not have to prove this definitively but rather only make a prima facie case showing that this is likely. Once the complainant makes this prima facie case, the burden shifts to the respondent to demonstrate that he does have a legitimate interest in the domain name. So, what qualifies as a “legitimate interest”? Fortunately, the UDRP takes at least some of the guesswork out of the equation and provides three fundamental scenarios under which a respondent can show that he has a legitimate right or interest in the disputed domain name:
Section 4(c)(i): Here, the respondent (registrant) makes a concerted effort to use the disputed domain name for the purpose of a bona fide offering of goods or services
Section (c)(ii): Here, the respondent (registrant), either in its capacity as an individual or business has been “commonly known” by the domain name, despite not yet obtaining trademark rights
Section (c)(iii): Here, the respondent (registrant) is “making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.”
It is worthwhile to delve a bit deeper into each one of these points:
Bona Fide Offerings:
Again, there are several variables that the panel will consider here but fundamentally, the question will turn on if/when the registrant had notice of the dispute and whether the registrant can show that it has already provided the offering of goods/services or if it can demonstrate that it has real and meaningful plans to provide goods/services in the near future. In the event that it becomes apparent that the registrant has provided good/services but with the purpose of trading on the complainant’s trademark and goodwill, it will not be considered “bona fide offerings.” Again, it is not enough for the registrant to say that he intends to sell goods/services, he must provide meaningful evidence of this intent.
Registrant’s Fame and Association with Disputed Domain Name:
Perhaps the easiest way to demonstrate the “commonly known” standard is by showing that the business name is the same or sufficiently similar to the disputed domain name. How can you tell? Well, the complainant simply needs to investigate the WHOIS record of the domain name and see if the personal or business name, establishing proprietorship, is the same or sufficiently similar to the domain name itself. So, if the domain name is “Alphazerox” and it turns out the the WHOIS records shows that the owner of the domain name is Alpha Zero X, Inc., it can be said, at least superficially, that the registrant is commonly known by the domain name.
Non-Commercial and/or Fair Use:
Fair Use is a legal doctrine which suggests that while the registrant may very well be using a domain name which is very similar to the trademark, there is never the less a legitimate reason to do so including; for example, the registrant has built a website containing a legitimate critique of complainant’s website. The doctrine of fair use is predicated on 1st amendment law which seeks to maximize an individual’s right to express his opinion and free speech.
Remember, it is incumbent on the Complainant to at least provide a prima facie case that Respondent does not have a “legitimate interest” in the disputed domain name so it would be prudent for the Complainant to conduct the necessary research to ascertain that at least a prima facie case can be made before filing the complaint.
Bad-Faith Registration and Use:
The Bad-Faith standard has a bit of a, “you know it when you see it”, character and the idea is here is that a registrant should not be able to register a domain name using the trademark of another with the intent and effect of profiting off of the hard work and fame garnered by another’s mark.
The UDRP provisions which cover this element specifically include the following list of examples of “bad-faith” in action”:
“(i) circumstances indicating that you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your 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 your web site or location or of a product or service on your web site or location.”
Please note, these four examples encompass both an emphasis on intent and use. The degree to which one or the other or both, Intent and use are required is not obvious and will likely be weighed by panelists according to the facts of the case.
WHAT IS A DOMAIN NAME?
A domain name represents a web address that allows Internet users to locate websites. Each domain name is unique to its site. Therefore, you cannot use one domain name for more than one site. Common extensions that are used for domain names include .com, .net, and .org.
You can also use a domain name for other web applications, such as email correspondence and (ftp) file transfers. For example, the domain name of our law firm is www.cohnlg.com, and our client’s contact us directly at [email protected] when they have a legal question about domain name disputes.
What IS A DNS?
A DNS is an acronym that stands for domain name system. This system is used to locate and translate domain names to Internet Protocol or IP addresses. You can also translate IP addresses to domain names using a DNS. IP addresses represent physical points on the web. Because IP addresses are long and can be hard to decipher, a domain name is used to make it easier for people to locate a website.
WHAT IS A GENERIC TOP-LEVEL DOMAIN AND HOW IS IT USED?
A generic top-level domain, or gTLD, represents the top-level domain of a web address. Examples of gTLDs include .net, .com, or .org. On November 16, 2000 ICANN (the Internet Corporation for Assigned Names and Numbers) included seven additional gTLDs. These seven domains include the following:
- .aero – for aviation businesses
- .info (for unrestricted use)
- .museum (for museum domain use)
- .biz – (for businesses)
- .coop – (for cooperatives)
- .pro (for professionals, such as accountants)
- .name (for the use of people using their personal name)
WHAT IS A COUNTRY CODE TOP-LEVEL DOMAIN AND HOW IS IT USED?
A country code top-level domain (ccTLD) is a two-letter Internet top-level domain (TLD) that is used to designate a specific country or territory. These domains are typically used to indicate the association of a website or an online presence with a particular country.
Each country has its own unique ccTLD. For example, “.us” represents the United States, “.uk” represents the United Kingdom, and “.ca” represents Canada. These ccTLDs are based on the ISO 3166-1 alpha-2 standard, which is a two-letter country code system used by many organizations worldwide.
The primary purpose of ccTLDs is to provide a localized web presence for individuals, organizations, and businesses associated with a specific country. They can be used by governments, businesses, educational institutions, and individuals to create websites, host email servers, and establish an online identity with a clear national affiliation.
The use of a ccTLD can provide several benefits. It helps internet users quickly identify the country to which a website belongs. It can also help search engines deliver more relevant results to users based on their geographical location. Additionally, some ccTLDs have specific registration requirements or restrictions, which may include residency or a physical presence in the associated country.
However, it’s important to note that while ccTLDs are associated with specific countries, they are not limited to use by entities within those countries. In some cases, ccTLDs have been used by organizations or individuals for creative purposes or as a play on words.
Overall, ccTLDs are a way to enhance online identification with a particular country or territory, helping establish a localized online presence and facilitating better targeting of online services and information.
WHY DO MOST DOMAIN NAME DISPUTES HAPPEN?
Most disputes over domain names arise when a cybersquatter registers a domain name in bad faith with the explicit purpose of profiting off of the registered trademark of another. Clearly, this is both commercially and ethically problematic. Why? The essential business model of the Cyber Squatter is to wait until a trademark holder has built a strong brand name and then build a website designed purely to profit off of the trademark holder’s reputation and success.
While cybersquatting is the most common reason for a domain name dispute, disputes can occur for several reasons, but some of the most common factors that contribute to such disputes are:
1. Trademark Infringement: One major cause of domain name disputes is when a domain name is similar to a registered trademark or trade name of another entity. This can lead to confusion among consumers or dilute the value of the established brand.
2. Typosquatting: Typosquatting, also known as URL hijacking, involves registering domain names that are variations or misspellings of popular websites or trademarks. The intent is to divert traffic from the legitimate website to the typosquatter’s site, often for advertising revenue or phishing purposes.
3. Domain Name Grabbing: Domain name grabbing occurs when someone registers a domain name that is the same as or closely related to a famous person’s name, a popular brand, or an emerging trend with the intention of selling it at a higher price to the interested party later.
4. Competitor Disputes: Competitors in the same industry may dispute domain names if they believe it gives an unfair advantage or misleads consumers. This can happen when a domain name is similar to a competitor’s brand, causing confusion or diverting potential customers.
5. Personal Disputes: Domain name disputes can also arise from personal conflicts or disagreements between individuals or organizations. This can occur when someone registers a domain name that includes another person’s name or infringes upon their personal rights.
To resolve these disputes, various dispute resolution mechanisms exist, such as the Uniform Domain-Name Dispute-Resolution Policy (UDRP) and legal actions through courts. These processes aim to protect the rights of trademark owners and resolve conflicts surrounding domain name ownership.
WHAT IS ICANN’S ROLE IN THE DISPUTE RESOLUTION PROCESS?
The Internet Corporation for Assigned Names and Numbers (ICANN) is the nonprofit organization which manages gTLDs, such as .com and .net. Fundamentally, it is responsible for the promulgation and stewardship of domain names and naturally has a very large role to play in this story. In the late 1990’s, ICANN determined that domain name conflicts and disputes would only increase as the internet became more powerful and prevalent and therefore, in 1999, ICANN officially adopted and instituted the Uniform Domain Name Dispute Resolution POLICY (UDRP). Under the policy, WIPO serves as ICANN’s leading domain name resolution provider although the Forum is becoming an increasingly popular resolution provider as well.
WHAT IS THE UDNRP’S PRIMARY ROLE?
The Uniform Domain Name Resolution Policy (UDNRP), adopted by ICANN, on August 26, 1999, is the governing policy, which mandates the procedural and substantive protocols for handling domain name disputes. Under this policy, trademark holders who believe that Cybersquating is disputants who believe a domain name registration infringes upon their trademark can begin a proceeding under the UDNRP. Legally, a registrant must take part in the proceedings, per the terms and conditions for gTLD domain name registration.
FILING A DOMAIN NAME COMPLAINT WITH WIPO
What Should You Include in Your Domain Name Complaint?
The UDNRP allows anyone filing a complaint to use a resolution service company. WIPO is undoubtedly the most popular resolution provider and requires only a few fundamental items to commence the process.
To file a complaint, the following information must be included among the submitted documents:
- The domain name (or domain names if multiple domains are in dispute)
- The holder of the domain or the respondent
- The domain name registrar
- A detailed showing that the complainant has a trademark implicated by the disputed domain name
- A detailed reason arguing why the respondent does not have any rights or legitimate interests in the domain name
- A detailed reason arguing why the domain name was registered and is now being use din bad faith
HOW ARE WIPO CASES DECIDED?
WIPO (World Intellectual Property Organization) cases are decided through the Uniform Domain-Name Dispute-Resolution Policy (UDRP), which is a process for resolving domain name disputes. The UDRP is an international policy adopted by ICANN (Internet Corporation for Assigned Names and Numbers) and is administered by WIPO.
Here is an overview of the process for deciding WIPO cases:
1. Filing a Complaint: The complainant, who believes they have rights to a domain name that is being improperly used or registered by another party, initiates the process by filing a complaint with WIPO. The complaint must include details such as the disputed domain name, the grounds for complaint (e.g., trademark infringement), and evidence supporting their claim.
2. Notification to Respondent: WIPO reviews the complaint and, if it meets the requirements, sends a notification to the respondent (the current domain name registrant). The respondent is given a specific time period to respond to the complaint.
3. Response by Respondent: The respondent has an opportunity to present their side of the case and provide arguments or evidence to support their rights to the domain name. Failure to respond does not automatically result in a decision in favor of the complainant.
4. Appointment of Panel: If the respondent submits a response or the allotted time for response expires, WIPO appoints a panel of one or three experts who are experienced in domain name disputes and IP law. The panel members are independent and impartial.
5. Panel Review: The panel reviews the complaint, response, and supporting evidence from both parties. They assess whether the complainant has satisfied the three main elements required for a successful complaint: (a) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights, (b) the respondent has no legitimate rights or interests in the domain name, and (c) the domain name has been registered and is being used in bad faith.
6. Decision: Based on the panel’s assessment, they make a decision on the case. If the panel finds in favor of the complainant, they may order the transfer or cancellation of the disputed domain name. The decision is typically communicated to both parties and the relevant domain name registrar.
7. Appeal or Implementation: After the decision is rendered, there is a limited period during which either party may seek further legal recourse through a court or accept the decision and proceed with its implementation, such as transferring the domain name to the complainant.
WHAT ARE THE POSSIBLE OUTCOMES IN A DOMAIN NAME DISPUTE WITH WIPO?
Remember, the core of any domain name dispute is the evaluation of the three-prong test:
- Does the Complainant have a Trademark, which is identical or confusingly similar to the domain name?
- Does the Respondent have a legitimate interest in the domain name?
- Was the domain name registered and now used in bad faith?
If the panelists determine that the answer to all three of these questions is “Yes”, the Complainant will prevail and the domain name will be transferred. However, please note, the Complainant WILL NOT be awarded monetary damages or court-ordered relief even upon winning a UDNRP domain name dispute.
ARE WIPO DECISIONS FOR CASES POSTED ONLINE?
Yes, WIPO decisions for cases are posted online and are publicly accessible. WIPO maintains a website where they publish the decisions made by their panels in domain name dispute cases resolved under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). These decisions are available for anyone to review and can provide valuable insight into the reasoning and outcomes of different cases.
The WIPO website provides a searchable database of UDRP decisions, allowing users to search by various criteria such as the domain name, complainant, respondent, and panelist. The decisions are typically published in a standardized format that includes details of the case, the parties involved, the panel’s findings, and the decision reached.
Publishing the decisions online serves multiple purposes. It promotes transparency in the dispute resolution process, allowing parties and the public to understand how UDRP panels interpret and apply the policy in different circumstances. It also helps establish precedent and consistency in the resolution of domain name disputes, as previous decisions can serve as guidance for future cases.
It’s worth noting that while WIPO decisions are publicly available, the personal information of the parties involved, such as their addresses or contact details, is usually redacted to protect their privacy. The focus is on providing the legal analysis and reasoning behind the decision rather than disclosing sensitive personal information.
FILING A DOMAIN NAME COMPLAINT WITH THE FORUM
Similar to WIPO, the FORUM is a dispute resolution company, which is charged with the mandate by ICANN to manage and adjudicate disputes involving domain names. Substantively, the FORUM considers the same three-prong test as WIPO (the existence of a relevant trademark, legitimacy of respondent’s use in the domain name, the extent to which the domain name was registered and used in bad faith) but procedurally, it is slightly different and arguably more nuanced.
THE FORUM PROVIDES EXCELLENT CUSTOMER CARE AND SERVICE
Once a complainant files a complaint, he/she will be assigned a case coordinator. While the case coordinator may not legal advice (at least on a substantive level), he can help with any procedural questions. Some of the questions you can ask your case coordinator include the following:
- Where do I obtain a specific form?
- How long will this part of the process take?
- Do I need to Serve the other party with a document?
- How much will Petition X cost to file?
While the FORUM does not have a “hotline” per se, the Complainant and indeed respondent can email directly with the case coordinator and expect a response fairly quickly.
COMMON QUESTIONS ABOUT FILING WITH THE FORUM
Can a decision be removed in its entirety once it has been posted on the domain resolution website?
No. Once a decision is made, it must be posted in its entirety with few and rare exceptions. This includes the addition of the Complainant’s Name and the Respondent’s.
If I lose, may I appeal the decision?
Yes. Either of the two parties in a dispute case may bring an action prior, during, and following a domain dispute case. If you are a losing respondent, you can appeal the case within 10 business days of a decision.
Does a copy of a complaint need to be served on the registrar?
Possibly. In some instances, the Supplemental rules state that a complainant must serve a copy of the complaint on the registrar. Because policies vary, you need to check with your case coordinator.
Can I obtain an extension of time to file an amended complaint?
Kind of. If you require more time to amend the complaint, you will need to first withdraw the complaint and then refile it.
Do digital copies of the complaint suffice or are hard copies required?
Most policies do not mandate that hard copies be sent. Confirm if you need to send hard copies with the coordinator for your case.
How should I submit the paperwork?
When possible, the UDRP, recommends that all documentation be filed and submitted by electronic means. Please email the case coordinator with detailed questions.
Is it possible to file a complaint with a .com domain name and .net domain name if the respondent is the same?
No. In this instance, you must file a separate complaint for each name, as the standards/rules vary for each.
Can a Filing Fee Ever be refunded?
Unfortunately not. The Forum as a matter of policy will not return monies.
HOW MUCH DOES IT COST TO FILE A UDRP COMPLAINT?
As with all legal matters, there are both required filing fees and legal service fees to calculate. Concerning the filing fees, depending on the number of domain names that are in dispute and the number of panelists involved in the adjudication process, the price will very. If there are anywhere from one to five domain names and only one panelist on the panel, the filing fee will be under $2000. However, if there are more than five domain names in dispute, with 3 panelists, the filing fees will be closer to $5000. Similarly, depending on the complexity of the case, the legal fees will vary. Please note, if there is only one panelist, it is incumbent on the Complainant to pay rather than the respondent.
Principally, you will only pay a fee when filing your dispute (as the Complainant). However, be forewarned and prepared, as you could pay more in costs, depending on the provider you choose, the nature of the dispute, and the number of administrative “judges” you choose to have on the Administrative panel which will decide your case.
HOW MUCH DO PROVIDERS CHARGE FOR THE REQUIRED FILING FEE?
As this article has already covered, UDRP complaints can only be filed in a qualified and designated arbitration body. Whether the Complainant chooses to avail himself of the Forum or World Intellectual Property Organization (WIPO), there is an initial filing fee that is prima facie incumbent upon the Complainant to burden.
The WIPO filing fee begins at $1,500 for filing a Complaint and covers as many as five domain names, and a single-member panel. The filing fee for filing the initial Complaint with the Forum starts at $1,300 and covers up to two domain name registrations and again, allows for a single-member panel.
Other dispute providers charge filing fees as follows:
- The ADNDRC (Asian Domain Name Dispute Resolution Centre) requires a filing fee of $1,300 for a Single Panelist and $2800 for Three Panelists;
- The ACDNDR (Arab Center for Domain Name Dispute Resolution) charges a minimum fee of $1,500; and
- The Czech Arbitration Court has a slightly more dynamic process for assigning the fee schedule.
Remember, if you are the Complainant, you have the power to select the venue that you believe to be most favorable to your case. Typically, this means that you will either be filing the complaint before WIPO or the Forum. However, just because you have the power to request a single-member panel, that does not mean that the Respondent does not have the right to request a 3-member panel. In this case, the financial burden actually shifts to the Respondent who is now required to pay for half of the fee for the newly requested and granted, 3-member panel. This is true irrespective of which service provider the Complainant has chosen to initially file the complaint; WIPO, FORUM, ADNDRC etc.
Other Possible Fees through the Forum
If you choose the Forum in which to file your UDRP complaint, you may invariably be subject to additional fees.
The Forum charges an additional fee if a respondent or complainant includes additional paperwork to their response or complaint. This may happen when either party wants to respond to the other party’s supplemental filing. Because the right to provide additional responses is not expressly granted under UDRP Policy, the Forum has the right, and indeed avails itself of that right, to charge additional filing fees. Please note, submitting the additional fee is no guarantee that the panel adjudicating the case will necessarily take the filings into consideration when issuing a final verdict.
While the Forum does not charge any additional fee for an extension of time request for 4 days, the Forum does charge an additional payment of $100 which allows for an extension request of up to 20 additional days. Typically, this $100 is well worth the price and allows the Respondent to gather his/her resources and put together a more developed Response.
WHICH COUNTRIES HAVE ADOPTED THE UDPR?
If you are reading this article from America, you may very well have taken for granted that all countries have adopted the UDRP. This is of course, not the case, and depending on which country the Complainant is in, the UDRP may or may not be an option. Most relevant to this audience and North America in particular is the example of Canada’s .ca ccTLD. The critical difference (although there are of course more than just a few) between the UDRP and other policies is the extent to which the three factors of the Cybersquating test are required to be met. Presently, just over 40 different countries have offically adopted the UDRP as the governing policy and consequently, complainant’s in any of these countries have the right to file complaints under the UDRP with any UDRP designated service provider including WIPO and the Forum.
| Country | CCTLD |
|---|---|
| Antigua and Barbuda | .ag |
| American Samoa | .as |
| Bermuda | .bm |
| Bahamas | .bs |
| Belize | .bz |
| Cocos Islands | .cc |
| Congo, Democratic Republic of the | .cd |
| Columbia | .co |
| Cyprus | .cy |
| Djibouti | .dj |
| Ecuador | .ec |
| Fiji | .fj |
| Federated States of Micronesia | .fm |
| Grenada | .gd |
| Djibouti | .dj |
| Djibouti | .dj |
| Equatorial guinea | .gd |
| Guatemala | .gt |
| Kiribati | .ki |
| Lao People's Democratic Republic | .la |
| Saint Lucia | .lc |
| Republic Moldova | .md |
| Montenegro | .me |
| Mali | .ml |
| Malawi | .mw |
| Nauru | .nr |
| Niue | .nu |
| Panama | .pa |
| Pakistan | .pk |
| Pitcairn Islands | .pn |
| Puerto Rico | .pr |
| Palau | .pw |
| Romania | .ro |
| Seychelles | .sc |
| Sierra Leone | .sl |
| Somalia | .so |
| Tajikistan | .tj |
| Tokelau | .tk |
| Trinidad Tobago | .tt |
| Tuvalu | .tv |
| Uganda | .ug |
| Venezuela, Bolivarian Republic of | .ve |
| Virgin Islands (British) | .ve |
| Samoa | .ws |