The Uniform Domain Name Dispute Resolution Policy (UDRP) is one of the many protective tools available to trademark owners. The filing of a UDRP complaint is meant to settle disputes over domain name registrations. Since around 15 percent of all retail sales now take place online, utilizing such a resource to protect your trademark on the internet may be required.
Filing a UDRP complaint can lead to a streamlined process so it may have benefits over traditional litigation. If you submit your claim incorrectly or fail to support your case, though, you could forfeit your filing fee while receiving no legal remedies for protecting your trademark.
Cybersquatting and UDRP
The UDRP was created to protect owners of trademark owners from cybersquatting. This occurs when a third party registers, uses, or sells an internet domain name in bad faith. The goal in doing this is financial. The cybersquatter could seek profit by attempting to sell items under the guise of another brand or by demanding a sort of ransom from the legitimate trademark owner.
The most important aspect of proving that cybersquatting has occurred is whether the claimant has established rights. This makes having a registered trademark with the U.S. Patent and Trademark Office (USPTO) ideal. Doing so will grant an assumption of validity, and this will make the process of filing a UDRP complaint much simpler.
The following are common examples of cybersquatting:
- Buying a top-level domain (e.g. .com, .net, .org) featuring a trademark to confuse consumers.
- Trying to sell a domain that features a company’s trademark to the legitimate brand.
- Registering a domain name with a potential misspelling of a trademark (e.g. Panosonic.com)
- Buying a domain whose owner accidentally let it expire and then trying to sell at an inflated price.
There are many actions that fall under the umbrella of cybersquatting, and all of them will qualify for a UDRP complaint. When a complainant prevails in these proceedings, the Internet Corporation for Assigned Names and Numbers (ICANN) transfers ownership of the domain over to them. In many cases, the complainant will then use a website forwarding tool for directing traffic to their official domain.
Elements of UDRP Complaints
Although the Uniform Domain Name Dispute Resolution Policy mimics trademark litigation in some respects, the complainant has no avenue of receiving financial compensation. One major similarity between the two, however, is the requirement for certain evidentiary elements. These dictate that even a domain name that incorporates an exact trademark isn’t necessarily infringing.
Anyone who files a UDRP complaint must establish the following three elements:
- Similarity: The domain name must be identical or confusingly similar to a protected trademark or service mark.
- Lack of rights: The third party has no rights over the name of the domain or legitimate interests in using it.
- Bad faith: Registration and use of the domain name occurred in bad faith.
The latter two elements are often what confuse trademark owners. If someone creates a website where unhappy clients can complain about Company X – and names the website CompanyXComplaints.com – then they may have a legitimate interest in using the domain. Likewise, a website with a similar name isn’t necessarily cybersquatting if it was created in good faith with lawful purposes in mind.
The UDRP panel overseeing a case considers a variety of factors when deciding whether bad faith has occurred. These include the following:
- Was the intent of purchasing the domain primarily to sell, rent or otherwise transfer ownership to the complainant that owns the trademark?
- Did the registrant purchase the domain name in order to prevent the trademark owner from registering it themselves? Has the accused cybersquatter engaged in this behavior previously?
- Was the purchase of the domain geared towards disrupting a competitor’s ability to conduct business?
- Was there an intentional attempt to profit by confusing consumers and attracting them based on the reputation of another brand?
If bad faith is established along with the other elements of cybersquatting, ICANN will transfer ownership of the domain to the complainant. Any decision made under the UDRP can be appealed in federal court. If the defendant loses the proceeding, they can file a lawsuit against the prevailing party within ten days to stop the transfer of the domain name.
How to File a UDRP Complaint
The UDRP can be invoked by filing a lawsuit against the domain name owner, but in cases of cybersquatting, submitting a complaint with the appropriate international organization may be more appropriate. Once this is complete, the domain owner has a chance to respond. Unlike traditional litigation, however, failure to respond will not result in default judgment.
Before you file a complaint under the UDRP, you must first choose where to submit your case. The following organizations can be used for this purpose:
- Forum (previously National Arbitration Forum)
- Arab Center for Dispute Resolution
- Asian Domain Name Dispute Resolution Centre (ADNDRC)
- Czech Arbitration Court (CAC)
- World Intellectual Property Organization (WIPO)
Each of these are approved UDRP dispute resolution service providers (DRSP). Some of the organizations – such as the Arab Center for Dispute Resolution – focus on specific regions. While you have several options of where to file, the World Intellectual Property Organization may be your best bet. They typically handle more cases than the other DRSPs and also offer partial refunds in some instances.
WIPO handles around 3,500 cases per year, and they are typically more cost effective – especially in cases of multiple domain registrations. While the paperwork is extensive, the filing process has been simplified. WIPO has a dedicated page for those wishing to submit a complaint. The following steps can be expected and are very similar between organizations:
- Submit the Model Complaint Document via email or file directly online.
- The appropriate filing fee must be submitted – this can vary dependent on case specifics.
- DRSP checks submission and verifies information with registrar to ensure compliance.
- Complainant must send a copy of the complaint to the domain registrar (not the respondent).
- DRSP will request that the registrar lock the domain for the duration of proceedings.
- Respondent has 20 days from commencement to file their response.
- Within five days of a response or the expiration date for filing one, a panel must be appointed.
- Panel has 14 days – except in “extraordinary circumstances” – to reach a decision.
- If complainant prevails, registrar has 10 days to transfer unless litigation is filed.
If the accused cybersquatter fails to respond, the onus of proving wrongdoing is still on the claimant. This is why it’s so important to prepare a strong case focusing on the three elements of legitimate UDRP complaints. DSRP decisions against cybersquatters are rarely contested in local courts, and if an infringer chooses to do so, they will open themselves to potential financial penalties.
Once a complaint is filed, the involved parties still have the option to settle outside of the DRSP. When filing through WIPO, the parties need to notify the organization that settlement discussions are occurring. This will pause the proceedings. If the parties come to an agreement, the Standard Settlement Form needs to be submitted. The registrar will then be notified to unlock the domain.
Cost of UDRP
The cost of filing a UDRP complaint will vary based on the specifics of your case and the DSRP you choose to go through. These charges do not include the cost of having a professional prepare and submit your case – which is ideal to avoid costly mistakes.
- Single-member panel (up to five domains): $1,500
- Three-member panel (up to five domains): $4,000
- Single-member panel (6-10 domains): $2,000
- Three-member panel (6-10 domains): $5,000
Trademark owners must contact WIPO for cases involving more than 10 domains.
- Single-member panel (1-2 domains): $1,300
- Single-member panel (3-5 domains): 1,450
- Single-member panel (6-10 domains): $1,800
- Single-member panel (11-15 domains): $2,250
All requests for three-member panels through Forum result in the above fees being doubled.
Czech Arbitration Court Fees
- Single-member panel (up to five domains): $800
- Three-member panel (up to five domains): $2,600
- Single-member panel (6-10 domains): $1,100
- Three-member panel (6-10 domains): $3,200
These fees get progressively higher as more domain names are included, but the CAC quotes just $2,000 for a single-member panel to review up to 50 domains. Even with the lower fees, this is a less popular avenue for filing UDRP complaints. There are also hidden fees that IP owners may encounter.
- Single-member panel (1-2 domains): $1,300
- Three-member panel (1-2 domains): $2,800
- Single-member panel (3-5 domains): $1,600
- Three-member panel (3-5 domains): $3,300
- Single-member panel (6-9 domains): $1,900
- Three-member panel (6-9 domains): $3,800
Complainants who want more than 10 domain names reviewed will need to contact the ADNDRC directly to obtain a quote.
UDRP Complaint Alternatives
Due to the relatively low costs and likelihood of success, filing a UDRP complaint may be the preferred method for dealing with cybersquatters and other wrongful owners of domains. There are a few other avenues, however, for dealing with the issue.
The most cost effective way to deal with the issue may be to start with a cease and desist letter. The following elements should be included:
- Parties’ contact information (name, address, phone, etc. of both parties).
- Description of behavior that constitutes cybersquatting or domain name trademark infringement.
- Proof of trademark ownership.
- Demand that website be turned over or removed .
- Demand that no further similar actions be taken.
- Description of further legal action that will occur if issue is not rectified.
- Expected deadline for a response.
Trademark owners also have the option to file a lawsuit under the Anticybersquatting Consumer Protection Act (ACPA). While this can be a lengthier process than a traditional UDRP complaint, it does open the door for financial compensation. Complainants could receive anywhere from $1,000 to $100,000 for each domain name in question.
The elements of an ACPA case are very similar to those reviewed under UDRP complaints.
Dependent on your specific situation, you may also be able to file a traditional trademark lawsuit.
If you have an issue related to a UDRP Complaint, please contact us today.