Uniform Domain-Name Dispute-Resolution Policy
The Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP currently applies to all generic top level domains (.aero, .asia, .nyc, etc.), some country code top-level domains, and some legacy top level domains (.com, .net, .org, etc.) in specific circumstances. One task for which ICANN is responsible is ownership resolution for generic top-level domains (gTLDs). ICANN’s attempt at such a policy was drafted in close cooperation with the World Intellectual Property Organization (WIPO), and the result has now become known as the Uniform Dispute Resolution Policy (UDRP). This policy essentially attempts to provide a mechanism for rapid, cheap and reasonable resolution of domain name conflicts, avoiding the traditional court system for disputes by allowing cases to be brought to one of a set of bodies that arbitrate domain name disputes.
How is the UDRP made mandatory?
When a registrant chooses a domain name, the registrant must “represent and warrant”, among other things, that registering the name “will not infringe upon or otherwise violate the rights of any third party”, and agree to participate in an arbitration-like proceeding should any third party assert such a claim.
The UDRP Process
A complainant in a UDRP proceeding must establish three elements to succeed:
- The domain name is identical or confusingly similar to a trademark in which the complainant has rights;
- The registrant does not have any rights or legitimate interests in the domain name; and
- The domain name has been registered and the domain name is being used in “bad faith.”
In a UDRP proceeding, a panel will consider several non-exclusive factors to assess bad faith, such as:
- Whether the registrant registered 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;
- Whether the registrant registered the domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, if the domain name owner has engaged in a pattern of such conduct; and
- Whether the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
- Whether by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, internet users to the registrant’s website, by creating a likelihood of confusion with the complainant’s mark.
The goal of the UDRP is to create a streamlined process for resolving such disputes. It was envisioned that this process would be quicker and less expensive than a standard legal challenge. The costs to hire a UDRP provider to handle a complaint often start around $1,000 to $2,000. If a party loses a UDRP proceeding, in many jurisdictions it may still bring a lawsuit against the domain name registrant under local law. For example, the administrative panel’s UDRP decision can be challenged and overturned in a U.S. court of law by way of the Anticybersquatting Consumer Protection Act, for instance. If a domain name registrant loses a UDRP proceeding, it must file a lawsuit against the trademark holder within ten days to prevent ICANN from transferring the domain name.