The acronym UDRP is one that many website owners may have seen or heard before, but what it is, where it came from, and why we need it may be less familiar if you have never been involved in a domain dispute. But, whether you know it or not, you agreed to abide by the UDRP when you signed your domain agreement. The UDRP (Uniform Domain-Name Dispute-Resolution Policy) is a set of rules found in every Domain Name Purchase Agreement that defines how domain name disputes should be decided. The UDRP generally applies to top-level domains such as .biz, .com, .info, and .org—to name a few. By signing the mandatory Domain Name Purchase Agreement when purchasing a domain, registrants “represent and warrant” that the registration “will not infringe upon or otherwise violate the rights of any third party,” and agree to an arbitration-like proceeding if such a claim should arise. While the UDRP is mandatory for domain holders, it is an optional procedure for mark holders. With the rise of the Internet in the early ‘90s came the use of trademarks as domain names without the owner’s consent, also known as “The Trademark Dilemma.” By 1998, the non-profit corporation ICANN (the Internet Corporation for Assigned Names and Numbers) was formed to assume responsibility for IP address space allocation, top-level domain name system management, and root server system management functions. In other words, ICANN ensures corporate trademark are not held ransom by those who register a certain domain name before the company can.
The UDRP essentially protects businesses from abusive or bad faith registrations. However, like all contracts, there is more to it than that. You can read the full UDRP here, or find the essential elements, below.
To have a domain name transferred, a complainant must prove:
• That the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
• The respondent has no rights or legitimate interests in respect of the domain name; and
• The domain name has been registered and is being used in bad faith by the respondent
The Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) is the process used to resolve disputes over internet domain names. But its use is not risk-free. A plaintiff who complains about a domain name in bad faith can be found to have committed reverse domain name hijacking (“RDNH”). And in this recent decision, a UDRP panel found that even where the complainant sought to withdraw his complaint before a decision issued, he could still be found to have committed RDNH. This case thus offers several important lessons to would-be UDRP complainants.
• Do not file frivolous UDRP complaints: Complainants typically file unwinnable UDRP complaints because either they do not understand the UDRP rules or they hope to coerce a domain registrant to transfer the domain. Both can lead to findings of RDNH. The fact that the panel refused to dismiss this case once Blue Nova had filed its response and asserted RDNH demonstrates the perils of both mistakes.
• Research your case before filing: Asserting trademark rights that do not pre-date the disputed domain name’s creation date is one of the most common reasons UDRP panels find RDNH.
• Privacy-protected domains may warrant pre-UDRP enforcement actions: In cases where a complainant’s trademark rights do not pre-date the domain’s creation, but the domain registrant’s identity has always been private, a successful UDRP may still be possible. Domains sometimes change hands multiple times in the course of their lives, and UDRP panels have ignored the domain’s creation date if it was shown that the current registrant acquired the domain at a later date from an unrelated registrant. But complainants hoping to make this argument need to have a reasonable basis for their belief that this happened (or, failing that, at least show that they made efforts to discover the registrant’s identity).
• When privacy protection is lifted, more research may be required: Once the privacy protection was lifted. Best practices would have included researching whether Blue Nova had been involved in any prior adverse UDRP proceedings or domain litigations with the goal of establishing a pattern or practice of bad-faith domain registration.
Domain Registration Law
At domain purchase, the registrant may be required to “represent and warrant” that the registration of that particular domain will not infringe upon or violate the rights of any third party. Additionally, the registrant agrees to participate in proceedings similar to arbitration should there be any disputes regarding that domain. However, registrants’ likely neglect reading the fine print in the registrar domain name polices. It isn’t until after a domain dispute arises that many domain owners look into domain rights and policies.
UDRP Domain Name Proceedings
Trademark infringement is usually the cause for UDRP cases. Trademark infringement through domain name registration occurs through cyber squatters more often than honest mistake. When determining whether a cause of action exists, the UDRP administrative review panel will analyze various factors including whether:
• The registered domain name is identical or confusingly similar to the trademark,
• Registrant has any legitimate rights or interests in the domain, and
• The domain name was registered and used in bad faith
To assess bad faith, the UDRP panel will use several factors as tests, including but not limited to:
• What the registrant is using the domain for,
• Past acts by the registrant,
• Whether the domain is being used to disrupt the business of a competitor, and
• Whether the domain is being used to palm off of an established mark
Drafting UDRP Complaints and UDRP Responses
The complainant must file a well drafted complaint to initiate the proceeding. It should prove all elements as well as refute any potential defenses. The review panel has some discretion with allowing additional submissions in UDRP proceedings. So, the contents of the initial complaint are important to success. In addition, once a UDRP action is filed against a domain owner, the time limits for proper response are short. Failure to take action to respond could result in loss of the domain name. Therefore, it is important to seek the advice of domain attorneys with experience and knowledge in defending UDRP dispute cases. A response should provide evidence to disprove each element claimed by the complainant. The administrative review panel will then reviews and grant an opinion most often without any further discussion or allowance of additional evidence. Litigation would be necessary to prevent transfer of a domain lost in a proceeding.
Protecting Against Domain Name Disputes and UDRP Actions
An Attorney provides advice on protecting against domain name disputes through proactive measures, for example:
• Domain name and trademark clearance searches before choosing a domain or trademark
• Cyber-squatting protections through monitoring and enforcement
• Defensive domain name registration and maintenance
• Worldwide domain monitoring and watch services
• Competitor tracking services
• Cease & desist letters, settlement negotiation, or litigation
• Trademark protection and enforcement programs
Attorneys assist with internet and domain disputes, including cyber-squatting, domain hijacking, hacking and other related issues. In addition, they offer consultation on best business practices to help avoid domain and internet related issues.
When can a UDRP provider help?
A UDRP provider will deal with complaints against Brussels registrants, on condition that you lodge the complaint in accordance with the formal requirements and have paid the procedure fees. To obtain the transfer of the domain name, you must meet three cumulative requirements:
• The domain name is identical or corresponds in such a way as to cause confusion with details such as a trade name to which the complainant has the rights.
• The registrant has no entitlement to or legitimate in interest in that domain name.
• The registrant acted with the intention of causing harm to a third party or of obtaining unwarranted benefit.
Cost Of The Procedure
The costs of the procedure are to be borne by the complainant who initiated the procedure. The costs depend on:
• the number of domain names that are the subject of the complaint
• the choice for one expert or a panel of experts, and
• the specific UDRP provider that is to be appointed.
UDRP and the ACPA Differences, Advantages and Their Inconveniences
One problem with the Internet, non-existent before 1994, is the confrontation between persons who, either intentionally or unintentionally, create an address on the Internet which includes someone else’s trademark. With the difference of just a month the Anti Cybersquatting Consumer Protection Act (ACPA) was enacted in November 29, 1999 while the Uniform Domain Name Dispute Resolution Policy (UDRP) of ICANN was approved in October 24, 1999. While any decision to pursue cyber-squatters under the ACPA or the UDRP belongs to the trademark owner, the attorney who advises the trademark owner should have a good working knowledge of the benefits and weaknesses of each method. The ACPA and the UDRP provide two separate and distinct methods for resolving domain name disputes. Both alternatives have many critics and proponents, but the true value of each will ultimately be determined by how well each combats cyber-squatting. Separately, the UDRP and the ACPA will probably work well to defuse most of the cyber-squatting that is currently invading the Internet. If combined together the UDRP and the ACPA can be a cost saving and effective way to prevent cybersquatting with the top-level domains (TLDs), the country codes top-level domains (ccTLDs) and the future new generic top-level domains (gTLDs). Nonetheless, neither is specifically tailored to be more effective for any specific case, but each one provides noticeable benefits to different types of cases. Because the UDRP is less expensive than litigation, ICANN’s UDRP is probably best suited for small businesses and trademark owners that are merely attempting to stop the use of their trademark. This method will also be helpful to those trademark owners who are fighting registrants that registered their domain names prior to the enactment of the ACPA, because under the ACPA, the trademark owners would not be able to receive damages. Litigation under the ACPA will be better suited for celebrities and for large companies seeking damages. Also, the ‘in rem’ proceeding seems enticing, but the well-advised counsellor should note that this proceeding is used only in very specific circumstances. The downside of ACPA lawsuit is that lawsuits are extremely expensive, time-consuming, stressful and uncertain. Considerable investment is required in terms of a good attorney and it can take years to get a resolution as to be successful in an ACPA lawsuit, the trademark owner must prove:
• that the mark is valid;
• the mark was distinctive when the site was registered; and
• the domain is identical or confusingly similar to the mark.
• the website owner registered the site in bad faith in order to profit from the mark;
The ‘in rem’ provision in the ACPA lawsuit is limited to the Utah, United States because ACPA is a U.S. Statute; hence the concerned trademark business needs to have substantial ties to the U.S. in order to bring a case under the ACPA lawsuit in U.S. Courts. If speed and cost efficiency are the two most desirable objectives for the client, then the UDRP is the best alternative. If these two objectives are not the primary concerns, then the ACPA may be a better alternative. Some of the major drawbacks of an UDRP proceeding is that there is no possibility of monetary damages in a UDRP proceeding. This is probably the major reason that some individuals or organizations prefer to take their chances with a lawsuit. Also, there is no opportunity for investigation, like there is in a civil lawsuit. The arbitrator’s decisions are mandatory in the sense that accredited registrars are required to take the necessary steps to enforce the decision, such as transferring the concerned name. However, under the UDRP, either party retains the option to take the dispute to a court for independent resolution. Thus, it is possible that the dispute will not end at arbitration. Another consideration focuses on when the domain name was registered. If the registration date is prior to the enactment of the ACPA then statutory damages are unavailable, making litigation appear financially less interesting.
The UDRP applies to domain names registered prior to the ACPA, but the UDRP only applies to top-level domain names. Country code domain names are not covered under the UDRP and, in those cases, the ACPA is the only option. If the client merely wants the domain name transferred or cancelled, then the UDRP makes more sense economically (so long as the domain name is a top-level domain name). The ACPA provides for transfer and cancellation, but these remedies are only available once the client has gone through the legal process and thus, accrued attorney fees and court costs. Also if the registrant is unavailable or cannot be found, then the ACPA is the only remedy that is available to the client. It can be argued that the UDRP has a comparable method because when a registrant does not respond to the complaint the proceeding continues and judgement is rendered without a response. Of course if damages are important, the ACPA is the appropriate method for battling the cyber-squatter. If time is most important and no injunction is necessary, then the UDRP may be more appropriate. If time and money are not important and the client does not care whether he receives damages or not, then either may be chosen. It is interesting how a simple choice between two options can become a complicated decision. This underscores the fact that there are no absolutes in the law and that advising a client regarding which avenue to take when battling a cyber-squatter is no exception.
An Attorney files UDRP proceedings as well as defend against them. In addition, they provide options, such as settling cases before decision or filing federal litigation. Domain attorneys advise clients on chances for success in UDRP proceedings. Attorneys analyze the strength of the trademark involved against defenses available to defendant.
Internet Business Lawyer
When you need legal help with a domain dispute, please call Ascent Law LLC for your free consultation (801) 676-5506. We want to help you.
8833 S. Redwood Road, Suite C
West Jordan, Utah
84088 United States
Telephone: (801) 676-5506