In the past month, I’ve had a number of clients who are either facing, or are in a good position to use, the Uniform Domain-name Dispute Resolution Policy (UDRP) for their websites and domain names. Given this rash of requests to our e-commerce law firm, this might be a good idea to explain just what is the UDRP and the advantages it offers online businesses and trademark owners facing disputes over domain names utilizing or confusingly similar to their valuable brands.
What is the UDRP?
The explosion of the World Wide Web in the very late 20th Century led to a number of enterprising individuals attempting to register trademarks they did not own or had no legal authority to use as Internet domain names. The purpose behind this “land grab” was almost always speculative.
By registering a domain name that was or contained a registered mark, these “cybersquatters” hoped to eventually cash in by selling the domain to the registered trademark owner (usually a large corporation with a very valuable brand) or even their competition.
By 1998, the non-profit corporation known as the Internet Corporation for Assigned Names and Numbers (“ICANN”) was created to effectively create order out of the early Internet chaos. ICANN would be the body responsible for IP address allocation, TLD name system management, and root server system management functions.
ICANN’s charge also included development of a system to ensure that trademark owners and their valuable marks could not be held hostage or blackmailed by registrants who had managed to register an identical or confusingly similar domain name before the trademark owner could.
Enter the UDRP. If you’re a business owner who bought a domain name for your company to use as its website, you very likely signed (at least electronically) a “Domain Name Purchase Agreement” that, within its terms, defines how disputes over certain top-level domain names (e.g., .com, .biz., .org, etc.) will be decided. The UDRP is a set of rules found in your Domain Name Purchase Agreement, which, whether you know it or not, you agreed to when you bought your domain.
Under these rules, you, as a “registrant” of a domain name, basically agreed to submit to an arbitration-like proceeding if ever a disagreement crops up between you and another party over your domain.
Why File a UDRP Complaint?
Essentially, the UDRP is intended to protect businesses and trademark owners from abusive or bad faith registrations of a domain name that is identical or confusingly similar to their own.
Before the UDRP came along, business owners and trademark holders faced with someone who registered a domain with the brand or trademark would have had three pretty bad choices: (a) do nothing, and allow the domain registrant to keep the domain containing your trademark and do god-knows-what with it, (b) cave and “pay the ransom” to the domain registrant, or (c) file an expensive and lengthy lawsuit against that registrant (most likely in Federal court) for trademark infringement, and (depending on how the domain was being used by the registrant) possibly trademark dilution and tarnishment.
How Does the UDRP Work?
The UDRP, however, gave businesses and trademark owners a highly valuable, and far more cost-effective, additional choice. While I am over-simplifying things (you can read the actual Policy in its entirety here), from the 30,000 foot level, the five stages in the UDRP process are:
2) The person against whom the Complaint was made receives a copy of the Complaint and submits a Response to the service provider (for purposes of this post, let’s say WIPO);
3) Assuming a Response is even filed (very often there isn’t), WIPO assigns the matter to an administrative panel of either one or three arbitrators (depending on how many the Complainant initially selects—more arbitrator panelists means an increased filing fee) who will decide the domain dispute;
4) The arbitration panel renders its decision and notifies all relevant parties; and
5) Implementation of the panel’s decision by the specific domain registrars (i.e., if the panel has said so, the subject domain name gets cancelled or transferred outright to the prevailing party).
Proving a UDRP Case
To stand the best chance of success as a UDRP complainant, you must demonstrate all of the following elements in your Complaint:
- That the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- The Respondent has no rights or legitimate interests in respect of the domain name; and
- The disputed domain name has been registered and is being used in bad faith by the Respondent
Again, as a complainant, you can’t just prove one or two of these, you must prove all three standards to the satisfaction of the arbitrator panel. Fail any of the elements, and your UDRP case will likely go down in flames.
In a future post or video, I will delve deeper into the third prong, namely the “bad faith” aspect, which is usually where most of the legal and factual analysis (and, in some instances, strong defenses) in many UDRP cases I’ve advised on come into play.
The advantages of UDRP proceedings are many for website owners, businesses, and trademark owners facing bad-faith domains infringing or tarnishing their valuable trademark or brand. They include:
- Avoiding the considerable cost, time, and uncertainty of litigation in Federal court
- Fixed filing fees/costs established by WIPO and NAF
- Relatively automated and quick case review and decision-making
- Winning complainants can have the disputed domain transferred to them by the registrar
Our Phoenix Internet and E-commerce law firm regularly represents business, trademark owners, and websites in UDRP proceedings, advising both complainants and those who have received notice of a UDRP complaint involving a domain they registered.
Image courtesy of Mohamed Hassan from Pixabay. Image cropped.
Ben Bhandhusavee is the Managing Attorney for BHANDLAW, PLLC, a startup, technology, and e-commerce law practice advising founders and management teams on company startup, corporate and technology transactions, e-commerce, as well as Internet privacy concerns. The firm serves corporate and individual clients throughout Arizona, the United States, and internationally. Our offices are conveniently located along the Camelback corridor in Phoenix’s financial district. For more information about our UDRP practice, feel free to reach out using the contact form on the right or call us at (602) 222-5542 to schedule a meeting. Connect with Ben on LinkedIn or Avvo.