UDRP Complaints

UDRP – Uniform Domain Name Dispute Resolution Policy

A UDRP proceeding before the WIPOarbitration or NAF is similar to a lawsuit because it is an oppositional proceeding in which both parties present legal arguments before an arbitrator (judge) who makes a decision about whether the domain owner keeps the domain or whether the domain is taken away from the domain owner. However, a UDRP proceeding is not as complex, lengthy or expensive as a lawsuit. The UDRP procedure was established to provide a quick and efficient decision in domain name disputes. If the losing party wishes to continue to fight for the domain name, he can appeal the decision by beginning a lawsuit in a United States Federal Court.

UDRP Arbitration

During the early years of the Internet, individuals and organizations began registering domain names that contained the brand names of major corporations. The domain names were then offered to the large corporations for exorbitant prices. Accordingly, if the corporations wanted to use the domain name containing their brand, they were “coerced” into paying extravagant prices. Needless to say, this was of great concern to the managers of major corporations and the owners of famous brand names. After a substantial amount of lobbying of Congress, laws and courtprocedures were enacted to attempt to prohibit individuals from purchasing domain names containing brand names for the purpose of reselling them to the owners of the brand names or corporations. One of the procedures established to deal with this problem was the Uniform Domain Name Dispute Resolution Policy (UDRP) established by the governing body of the Internet (ICANN). Another solution to the problem was the enactment of federal laws by the United States Congress by the name of the Anti-Cybersquatting Consumer Protection Act (ACPA).

The UDRP procedures established an expedited administrative process to permit trademark owners to obtain domain names that contained their trademarks. This UDRP procedure was established to remedy the most egregious attempts to extort substantial sums from the owners of trademarks and brand names. The two principal arbitration organizations that were given the authority to adjudicate domain name disputes were the World Intellectual Property Organization (WIPO ) and the National Arbitration Forum (NAF). The procedures provided that a trademark owner could file a complaint with one of the arbitration organizations in order to initiate an arbitration proceeding. The complainant was required to prove three things in order for the arbitrators to decide that the domain name should be transferred to the complainant:

  1. That the complanant had a valid trademark on a word or term that was included in the domain name.

  2. That the domain name owner did not have a legitimate right to the domain name.

  3. That the domain name owner was engaged in an activity that demonstrated the bad faith of the domain name owner.

If a complainant is successful in domainconvincing the arbitrators that there has been a violation of the UDRP, the arbitrators will issue a decision that the domain name will be transferred to the complainant. This arbitration proceeding can only result in a transfer of the domain name. Fines, penalties and damages cannot be ordered by the arbitrators in these UDRP proceedings.

UDRP Procedures

The person or entity making the complaint about a domain name registration (complainant) initiates the UDRP proceeding by filing a complaint (10 to 15 pages in length) and paying the initial fee. The respondent (person or entity against whom the domain name registration complaint has been filed) may request that a panel of three arbitrators (rather than one arbitrator) decide the case. Statistically, when additional panelists are requested by the respondent, more decisions have been favorable for respondents. Furthermore, UDRP proceedings in one of the arbitration organizations is more likely to result in a decision for the respondent than a proceeding in the other arbitration organization. There are several reasons for this that we can discuss with you. Since this law firm has handled a substantial number of domain name disputes, we are aware of some advantageous strategies to increase the likelihood of a victory in a domain name dispute.

URDP DecisionThe panel deciding a UDRP domain name dispute is very limited in the types of decisions and the remedies that it can grant. Unlike a court of law, the UDRP panel cannot grant money judgments for trademark infringement, business losses, attorney fees, etc. The panel can only decide whether the domain name is to be taken away from the registrant and given to the complainant. An unsuccessful party in a UDRP proceeding may file a lawsuit in court. However, if court litigation is not instituted within 10 days of the UDRP decision, the registrar of the domain name is required to comply with the decision of the UDRP panel and transfer the domain name if the UDRP panel has ordered a transfer.

A more detailed description of the UDRP procedures is provided here.

UDRP Evidence

Courts of law have strict rules of evidence. UDRP proceedings do not. Virtually any type of evidence can be submitted to arbitrators. The arbitrators then review the submissions and decide the case based on their evaluation of all of the factors and considerations that have been submitted. Types of acceptable evidence for submission to a UDRP panel include:

  • Correspondence between the parties concerning the domain name in question

  • Legal notices such as cease and desist letters cease and desist

  • Evidence supporting an attempt to extort money for the domain name

  • Any evidencing showing the holder of the domain name is the rightful trademark or famous name of one of the parties.
    In preparing submissions to the arbitrators, both the complainant and the domain name owner include as much evidence as possible in their attempt to prove their case. The evidence submission is often more than 100 pages in length. The details of the complaint document submissions and the respondent’s document submissions are described below.

 

WIPO-- The World Intellectual Property Organization

The World Intellectual Property Organization (WIPO) is one of the organizations that has been given the authority to decide UDRP proceedings. WIPO is located in Switzerland and has been an international trademark oversight organization for many years. When the UDRP was established, WIPO was given the authority to conduct the arbitration proceedings. WIPO then established its own procedures for handling UDRP arbitration proceedings. The rules and procedures provide the details of the procedures that are to be followed for arbitration under the Uniform Domain Name Dispute Resolution Policy that was initially established by ICANN, the internet governing organization.

More details of the rules and procedures for WIPO are provided here.

NAF -- The National Arbitration Forum

decisionThe National Arbitration Forum (NAF) is the second principal organization that has been given the authority to conduct arbitration proceedings and decide complaints filed pursuant to the Uniform Domain Name Dispute Resolution Policy. It is located in the state of Minnesota in the United States. For many years it has been an organization that has conducted arbitration proceedings for many types of business disputes. NAF has established its own rules and regulations that must be followed in a UDRP proceedings.

More details of the rules and procedures for NAF are provided here.

The Complaint

In a UDRP proceeding the complainant initially files the complaint document (approximately 10 pages in length) which describes in detail the complainant’s allegations andcontract the complainant’s attempt to convince the arbitrators to decide in favor of the complainant and transfer the domain name from the registrant. Attached to the complainant is the evidence that the complainant presents to attempt to convince the arbitrators that each of the elements of the UDRP is present. The attachments are often more than 100 pages in length. The principal issues that the complainant attempts to prove are that:

  1. The complainant has a trademark or other rights in a term included in the domain

  2. The owner of the domain name does not have a legitimate reason to own the domain name

  3. The owner has acted in bad faith.

The proof of each of these elements is fairly complex. The complaint usually includes references to previous UDRP decisions and court decisions that have made determinations about critical issues in the three elements such as “what actions demonstrate bad faith”, “what evidence proves that a domain name owner has acted in bad faith”, “what kind of trademark rights are sufficient to permit a complainant to take away a domain name from an owner”, etc.

The Response

WIPOAfter the complaint document is sent to the owner of the domain name, the owner has 20 days to respond. The owner then responds by filing a response document (approximately 10 pages in length) which sets forth all of the reasons that the owner believes that the complainant has not proven all of the elements of the UDRP. Attached to the response is all of the evidence that the owner believes will convince the arbitrators that

  1. The complainant DOES NOT have a trademark or other rights in a term included in the domain

  2. The owner of the domain name DOES have a legitimate reason to own the domain name

  3. The owner has NOT acted in bad faith.

The Decision

If the respondent does submit a response, the complainant can submit a second document to reply to the respondent’s response. NAF has a time limit of 5 days for the submission of a second document. For proceedings in WIPO the acceptance and consideration of additional submissions is within the discretion of the arbitrators. Under NAF rules, the respondent will then have five days to submit its response to complainant’s second submission.

The staff of the arbitration organization then selects an arbitrator (or arbitrators)-- which can take 10 to 20 days. The arbitrator(s) then typically issues a decision within 30 days.

Consequently, a shortest time is approximately 45 days from filing. The longest time can be approximately 90 days.

Additional details about the rules and procedures are provided on other webpages:

UDRP Rules Details

Details about the Uniform Domain Name Dispute Resolution Policy (UDRP) here.

WIPO Rule Details

Details about the Rules and Procedures of the World Intellectual Property Organization (WIPO) here.

NAF Rule Details

Details about the Rules and Procedures of the National Arbitration Forum (NAF) here.

Here are some examples of decisions:

National Arbitration Forum Decision regarding the term <codetel>.

WIPO One of our Victories Against Aventis Pharmaceutical

Additional Examples of Domain Name UDRP Decisions

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