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Domain Legal Issues

  

UDRP Disputes

The UDRP (Uniform Domain Name Dispute Resolution Policy) is the policy ICANN adopted to resolve domain name disputes when there is a claim of ‘cybersquatting’. Whenever someone registers a domain name with a global TLD, they must agree to the policy. It’s one of the easier and less expensive ways for trademark owners to resolve a dispute. When a UDRP complaint is filed, a panel consisting of 1 to 3 panelists will review the complainant’s and the respondent’s documented evidence, then render a decision of for or against the transfer to the trademark holder’s name.

UDRP Jurisdiction

The UDRP is not a legal document though. It is a policy adopted by an organization to help with the issue of cybersquatting. Because it is not an official legal resource, it does not have legal withstanding. If you were to end up in court though, a favorable UDRP ruling would likely help your case.

The UDRP’s lack of authority can be both helpful and restrictive to both the domain owner and the trademark owner, depending on the circumstances. The policy is helpful in that ICANN is not restricted to U.S. disputes. Because they control the DNS (Domain Name System), trademark owners can take action against domain name owners in various countries. The policy is ineffective, however, if the complainant is seeking monetary damages. Because the UDRP can only issue instructions to the Registrar to transfer a name to a complainants name, companies seeking damages will have to look elsewhere for legal help. 

The UDRP applies to global TLDs, like .com, .org, .net, .name, .info, .biz, .mobi, and several others. It also applies to several of the ccTLDs that have adopted the policy.

Filing a UDRP Complaint

To file a UDRP complaint, the trademark owner must use one of the approved ‘Dispute-Resolution Service Providers’ (see our Legal Resources guide). The cost can range anywhere from $1,000 and up, depending on how many domain names are involved and how many panelists the complainant wants in the proceeding.

While the trademark owner does not need an attorney to file a complaint, one is generally recommended. A good understanding of the law and a good presentation of the case will certainly help the complainant’s cause. In fact, it’s recommended to use a lawyer that specializes in domain name cases.

Once the complaint has been filed, the provider will send a copy of the complaint to the respondent, who then has 20 days to answer. If the respondent does not provide a written response within that time frame (unless there are some unusual circumstances) the panelists will base their judgments on the documents submitted by the complainant. In most cases, they’ll rule in favor of the complainant when the respondent doesn’t answer.

Answering a UDRP Complaint

When the domain name owner gets a complaint from one of the accredited providers, they have 20 days to send a written response. That response should outline the domain owner’s case, answering all of the complaints made by the complainant. If the domain owner refuses to reply, the panelists will make their judgment based on the documentation submitted by the complainant. Most of the time, this means that the complainant will win the transfer order.

A respondent does not need an attorney to answer the complaint, but one is strongly recommended, even when the case for the domain owner is strong. The better the dispute is understood and presented, the more of a chance the respondent has of defending their domain name. The respondent may also want to prepare for a court trial, in the event that the panelists rule in favor of the complainant. The respondent may even want to file a civil suit against the complainant for legal costs.

Proving a Case of Cybersquatting

Much like the US court system, UDRP cases take the “innocent until proven guilty” stance and the proof of ‘bad faith’ rests on the complainant. In order to win the arbitration, the complainant must prove all of the following:

  • The domain name is identical to or similar to (to the extent that it confuses web users) a trademark held by the complainant.
  • The domain name owner has no legal rights or interests to the domain name and its connection to the trademark.
  • The domain name owner is using it or registered it in ‘bad faith’.

Bad faith can mean several things though and the term seems to get more ambiguous every year. While the UDRP does define it, it does leave room for further interpretation in their wording. So, just because the circumstances don’t fall within their published definition, that does not mean a complainant can’t win a transfer order.
First and foremost, bad faith generally means registering or purchasing a domain name with the intention of reselling it to the trademark owner for a price that exceeds the out-of-pocket expenses. For example, John registers the domain name WindowsSolutions.com and tries to sell it to Microsoft for $10,000. Even though the domain name could be used by a window cleaning service, John stuck his foot in his mouth when he tried to sell it to Microsoft. He just became guilty of bad faith.

Bad faith could also mean registering a domain name to prevent a trademark owner from registering one that corresponds to their trademark. For example, John sees a new company starting in the neighborhood, then registers the name of their company as a trademark or he registers the matching domain name before they think to do it. Whether he tries to sell it to them or not, he is guilty of bad faith.

Bad faith could also mean registering a domain name with the intention of disrupting the business of a competitor. For example, John owns a window cleaning service and registers a domain name that is the company name of one of his competitors, essentially sending all the traffic from that domain to his own site. This is also an act of bad faith.

Finally, bad faith can mean registering a domain name that will confuse web users into thinking that the domain name is somehow related to, affiliated with, or in any way associated with the trademark holder for commercial gain. Notice that only the domain name is what is used to confuse web users. So if John registered the domain name WindowsSolutions.com and published a landing page with a big headline that read, “WE ARE NOT IN ANY WAY ASSOCIATED WITH MICROSOFT OR WINDOWS SOFTWARE”, he could still be found guilty of bad faith. As a matter of fact, many pending lawsuits against typo-squatters are now using this definition of bad faith as their point.

Defending a Cybersquatting Charge

The respondent in a UDRP arbitration has it much easier than the complainant. In some clear-cut cases, the respondent might only have to submit several documents with a short explanation. But, even in such cases, if the domain name in question has any value to it, it’s always better to contact an attorney.

To disprove a cybersquatting complaint, all a respondent must do is prove any one of the following:

  • Proof that they registered the domain and used it (or had been preparing to use it) to offer goods or services before they knew about the dispute/complaint from the trademark owner.
  • Proof that they had been previously known by the domain name, even if they had not registered it as a trademark.
  • Proof that they have a genuine, noncommercial use for the domain name, and are not misleading consumers or tarnishing the name of the trademark holder.

In most cases, when a domain name owner has a legitimate reason to register a domain name and use it for a website that is not in anyway related to the trademark holder, the respondent would not have too much trouble keeping the name. However, popular international trademarks owners often defy the precedent. Unfortunately, as in the case of Volkswagen vs. VirtualWorks, the larger company generally wins.

The UDRP Decision

The UDRP arbitration can give only one of two decisions – they either rule for the complainant or for the respondent. There are no middle ground rulings or conditional decisions. If the UDRP rules in favor of the complainant (the trademark holder), they receive an official order from ICANN for the Registrar to transfer, delete, or change the existing domain name. If the respondent (the domain name owner) wins, then nothing happens. The entire process, in most cases, takes 45 days or less.

The official ruling comes from the panel. They send the decision to the provider, who then has 3 days to notify both parties (complainant and respondent) and ICANN. Once ICANN receives a ruling in favor of a complainant, they wait 10 days before issuing their transfer order to the Registrar. If, in those 10 days, ICANN receives notice that the respondent has filed a lawsuit to ‘overturn’ the decision and retain rights to the domain name, they hold off on their transfer order until they receive official evidence that the case has been dropped or resolved.

It’s important to note that the UDRP doesn’t have the final say. This is why it’s important for the respondent to contact an attorney early in the game. If the UDRP rules in favor of the complainant, the respondent has only 10 days to bring the case to court and stop ICANN from issuing their transfer order.

Once ICANN receives the legal notice, they will not take any further action until they receive written notice that both parties have resolved the dispute, or evidence that the lawsuit was either dismissed or that the domain name owner lost in court.

UDRP Aftermath

As mentioned earlier, the UDRP panel is not always the final decision. A respondent (or complainant) may choose to take their case before a court and ‘overturn’ the decision handed down by the UDRP.

What’s more, a respondent, after winning the UDRP decision, can sue the complainant for legal costs or damages. Additionally, the complainant can take the respondent to court and sue for trademark infringement. There are endless ways to ‘keep the battle going’ and often times a UDRP hearing is just the beginning.



One Response to UDRP Disputes

  1. having a dispute right now on EDCOrlando.com thanks so much for this article. It really helped if I lose I’m going to make sure to file suit in those 10 days.


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