Introduction to UDRP domain disputes

The Uniform Domain Name Dispute Resolution Policy is the grandfather of domain name dispute policies, having been approved by ICANN back in October 1999. It governs arbitration proceedings involving the most important gTLDs, including disputes about .com, .net, .org, .biz and .info domains. In addition, some ccTLDs registries have voluntarily adopted the UDRP.

The UDRP was promulgated by ICANN; however, ICANN is not responsible for providing dispute resolution facilities. There are presently four providers accredited for gTLD disputes: the WIPO Arbitration and Mediation Center, the National Arbitration Forum, the Czech Arbitration Court, and the Asian Domain Name Dispute Resolution Center. WIPO and NAF handle the majority of the cases.

WIPO was the first UDRP accredited provider, and began providing a domain name arbitration service in 1999. Since then it has processed more than 23,000 cases. NAF is based in the US, and many of the complainants who use its services are based in North America. It deals with only slightly fewer cases than WIPO.

Procedural rules

Most of the key procedural rules are set out in the UDRP and the Rules for UDRP published by ICANN. Additional detail can be found in the supplemental rules issued by the dispute resolution service providers.

The procedural rules are straightforward. The complainant files a complaint in the requisite form and pays the up-front fees. The fees vary with the choice of provider, number of domain names at issue and the number of panellists chosen, and range between $1300 and $5000+. After the complaint is filed and the fee paid, a block is put on the domain name preventing transfer for the duration of the proceedings.

The respondent's case is set out in its response, which must be filed within 20 days of the date of receipt of the complaint. If no response is received (a common circumstance) the expert is empowered to consider this as a ground to accept the complainant's arguments. In most cases there will be no opportunity for the complainant to reply to the response.

It usually takes less than 2 months between the filing of a UDRP complaint and the issue of a decision. The remedies available are revocation and transfer or the domain name(s) at issue; the remedy will be implemented by the domain registrar. There is no appeal from a panel decision (unlike, for instance, at Nominet); however, the parties to UDRP proceedings are free to bring legal proceedings at any time.

Substantive rules

Paragraph 4(a) contains the basic rules concerning disputes under the UDRP: "You are required to submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that (i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and (ii) you have no rights or legitimate interests in respect of the domain name; and (iii) your domain name has been registered and is being used in bad faith. In the administrative proceeding, the complainant must prove that each of these three elements are present."

In other words, there are three hurdles for a complainant under the UDRP: he must show that he has rights in a relevant mark, that the respondent has no rights/legitimate interests in the domain, and that the domain was acquired/registered in bad faith.

Rights of complainant

The easiest way to demonstrates rights in a trade mark is through a trade mark registration or, better, a portfolio of registrations. However, UDRP panels can usually be persuaded that a complainant has rights where the complainant can show a reasonable amount of actual use of the mark. The more distinctive the unregistered mark, the easier it will be to prove rights in this way.

The test for confusing similarity involves a comparison between the trade mark and the domain name to determine the likelihood of confusion. The content of any website that the disputed domain may point to is irrelevant for this particular purpose.

Rights and legitimate interests of respondent

Paragraph 4(c) of the UDRP concerns rights and legitimate interests: "Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii): (i) before any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or (ii) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or (iii) you are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."

Panellists have not strictly applied the requirement that a complainant prove that the respondent has no rights or legitimate interests in the domain name. As the WIPO guidance says: "while the overall burden of proof rests with the complainant, panels have recognized that this could result in the often impossible task of proving a negative, requiring information that is often primarily within the knowledge of the respondent. Therefore a complainant is required to make out an initial prima facie case that the respondent lacks rights or legitimate interests."

Bad faith

Paragraph 4(c) of the UDRP concerns bad faith: "For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith: (i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or (ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or (iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or (iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location."

If a domain name is registered before the date of the establishment of the complainant's trade mark rights, that fact will usually defeat the complaint on the basis that the registration could not have been in bad faith. There are however limited exceptions to this rule. For example, if a third party registration of a domain name consisting of elements of two different companies' names is prompted by rumours of a corporate merger, that may be enough to constitute bad faith, notwithstanding that there may be no registered or unregistered rights in the new name.

Some panels have found that the passive holding of a domain may be enough to justify a finding of bad faith. In particular, where a trade mark is very famous panels have found it difficult to conclude that the registration could possibly have been in good faith, no matter what the domain name has been used (or not used) for.

Conclusions

In terms of usage, the UDRP must be one of the most successful forms of ADR in legal history. The manifold advantages of the procedure over court litigation - in terms of cost, time and ease of enforcement - mean that it (or its successor policy) will remain a key feature of the domain name system for so long as that system is open to abuse.

The system has not however escaped criticism. The most common complaint is that the substantive rules, the methods of selection of dispute resolution providers and/or the methods of selection of panellists constitute a regime which is systematically biased in favour of trade mark owners and against domain registrants.

This is a slightly adapted version of an article originally published on www.website-law.co.uk in September 2006.

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