Uniform Dispute Resolution Policy (UDRP) Complaints
Here are some FAQs:
What is a UDRP complaint?
If your domain name dispute concerns a gTLD (e.g., .com, .net), then you might be able to recover the domain name by filing a complaint under an arbitration procedure known as the Uniform Dispute Resolution Policy, otherwise known as the UDRP, set up by the internet naming authority ICANN. The UDRP also applies to the “new gTLDs” (e.g., .club, .loan etc) as well as to some country domains and other kinds of domain names such as “uk.com”.
The UDRP is “incorporated” into the terms and conditions on which such domain names are registered, meaning that the registrant can’t stop the domain name being transferred to a complainant if they file a successful UDRP complaint.
Where do you file a UDRP complaint and how much does it cost?
There are a number of bodies accredited to handle UDRP cases. These include the World Intellectual Property Organisation (WIPO) and the National Arbitration Forum (NAF). The official fees are set by the providers themselves. Generally, the complainant fee for filing a UDRP complaint based on a single domain name is around US$1300 – $1500 but there is a higher cost (around $4,000) if the complainant opts for a 3-person panel (rather than the normal single-person panel). Usually the respondent only pays a fee if it requests a 3-person panel, in which care then the fee is split equally between the parties. The official fees exclude the legal costs involved in preparing complaints / responses.
What do you have to prove?
To succeed with a UDRP complaint, you have to prove to the UDRP panellist:
First, that you have a trade mark which is identical or confusingly similar to the domain name. The trade mark doesn’t have to be registered. You can also rely on “common law rights” i.e. evidence of reputation and goodwill which you have built up in the name so that it’s become distinctive – but it’s crucial to back up such claims with evidence.
Second, that the registrant / respondent has no rights or legitimate interests in the domain name and that the domain name was registered and is being used in bad faith. The UDRP provides non-exhaustive examples of both scenarios.
Typical UDRP cases more likely to go against the registrant: registering a domain name and immediately offering it for sale to a trade mark owner; registering a competitor’s name and forwarding to the registrant’s own competing site.
Typical UDRP cases more likely to go in favour of the registrant: registering a wholly descriptive domain name and using it exclusively in relation to that descriptive purpose (e.g. genuinely using apples.co.uk to sell apples rather than computers); registering a domain name and using it for a genuine business without reference to the complainant e.g., before the complainant ever started using the name.
And of course there are many grey areas in between!
Obviously, circumstances will vary widely but as domain name lawyers and panellists we know well that you have to provide sufficient information and evidence to cover all of the points required under the UDRP. Otherwise the UDRP complaint will fail.
How long does it take?
In our experience, UDRP cases tends to be take anywhere from six to ten weeks, depending on whether they are contested and how complicated they become.
What are the possible outcomes?
If you are a successful UDRP complainant, the normal outcome is transfer of the domain name in dispute – usually the main objective of those filing UDRP proceedings. Sometimes the domain name is cancelled. You can’t recover (or be ordered to pay!) compensation or legal costs.
Are previous UDRP cases relevant?
Potentially yes – but they now run into the tens of thousands! So, apart from some well-known ground-breaking UDRP decisions, it’s more important to be aware of the general trends than individual cases. Fortunately, WIPO have prepared a very detailed and thorough case overview, available on its website, which explains areas of consensus, and indeed division, amongst panellists. It’s important to be aware of these issues and deploy them in UDRP filings, whether by the complainant or respondent.
Can the loser appeal?
No. There is no provision within the UDRP for appeals. The only option is to go to court assuming there is a legal basis to do so – and often there isn’t. It’s therefore important to get the UDRP complaint right first time as there’s no second chance (except in rare cases e.g. something crucial happens after the original UDRP complaint is filed).
UDRP v court?
An alternative to the UDRP is to go to court based on a legal cause of action such as passing off or trade mark infringement. But the UDRP has the advantage of being far quicker and cheaper than undertaking legal proceedings. And it avoids difficulties of working out which country’s courts can hear the dispute and enforcing court awards when the domain name registrant is abroad. These days, the vast majority of domain name disputes go to the UDRP rather than court.