Domain Name Disputes: Understanding the UDRP Process

The Uniform Domain Name Dispute Resolution Policy (UDRP) provides a venue for trademark owners to protect their exclusive rights when faced with infringing third-party domain names. As proceeding under the UDRP can be both quicker and more cost-effective than pursuing trademark infringement litigation in court, hiring a Florida trademark attorney to file a UDRP complaint will be the best approach in many cases. If you have questions about initiating a domain name dispute under the UDRP, keep reading to learn what you need to know about the process.

The UDRP Covers Domain Name Disputes Involving Generic TLDs and Many Country Code TLDs

Under the terms of the Uniform Domain Name Dispute Resolution Policy, all domain name registrars must follow the UDRP with respect to generic top level domains (TLDs), while following the UDRP with respect to country code TLDs is voluntary. However, many registrars have voluntarily agreed to follow the UDRP with respect to these “ccTLDs.”

The UDRP is specifically intended as a tool for trademark owners to protect their exclusive rights against cybersquatters and other infringers. As the Internet Corporation for Assigned Names and Numbers (ICANN) explains:

“Disputes alleged to arise from abusive registrations of domain names (for example, cybersquatting) may be addressed by expedited administrative proceedings that the holder of trademark rights initiates by filing a complaint with an approved dispute-resolution service provider.

“To invoke the [UDRP], a trademark owner should . . . in cases of abusive registration[,] submit a complaint to an approved dispute-resolution service provider.”

A list of approved dispute resolution service providers is available from ICANN. It is also important to note that while the UDRP provides a direct means for trademark owners to challenge abusive registrations, trademark owners can also use the UDRP to seek cancellation of infringing domain names in other cases—once a dispute has been resolved via litigation, arbitration or settlement.

Determining Whether a Domain Name Registration is “Abusive” Under the UDRP

With this in mind, a key first step for trademark owners considering action under the UDRP is whether the offending domain name registration qualifies as “abusive.” As explained by the World Intellectual Property Organization (WIPO), establishing an abusive registration requires proof of three elements:

• “[T]he domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and
• “[T]he domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
• “[T]he domain name has been registered and is being used in bad faith.”

Section 4(b) of the UDRP provides examples of circumstances that are considered to be indicative of bad faith—and thus indicative of an abusive domain name registration. These examples include (but are not limited to):

• Evidence that the domain name was registered or acquired primarily for the purpose of selling it or renting it to the complainant;
• Evidence that the domain name was registered in order to prevent the complainant from registering it (“provided that the domain name registrant has engaged in a pattern of such conduct”); and,
• Evidence that the registrant attempted to profit or generate traffic by creating a likelihood of confusion with respect to the complainant’s trademark.

Filing a Complaint Under the UDRP

Filing a complaint under the UDRP starts with choosing an approved dispute resolution service provider. Once a trademark owner decides where to file, then the next step is to prepare and submit a formal complaint. This must be done in accordance with both the procedural requirements of the UDRP itself and the requirements established by the relevant service provider. Additionally, as WIPO notes, UDRP complaints “must normally be submitted in the same language as the Registration Agreement” for the offending domain, although there are some exceptions.

Paragraph 3 of the UDRP Rules establishes the basic substantive requirements for a valid UDRP complaint. Beyond meeting these basic requirements, however, trademark owners will want to work closely with a Florida trademark attorney to ensure that they are presenting the strongest possible case for securing the transfer of the offending domain name. While some cases can be relatively straightforward, others can be much more complicated, and, in any case, clearly establishing the grounds for transfer is critical for maximizing the chances of an efficient and favorable result.

Trademark owners must also submit the appropriate filing fee at the time of filing. These fees vary between service providers and are based on the number of domain names involved, the number of panelists requested to preside over the dispute, and other factors.

Pursuing a Resolution Under the UDRP Does Not Preclude Other Legal Options

Importantly, pursuing a resolution under the UDRP does not preclude trademark owners from pursuing other legal options. The UDRP is intended to help facilitate the protection of trademark owners’ exclusive rights, not restrict their means of enforcement. Thus, as WIPO states, “[i]t is possible for a party to start a lawsuit in court before an administrative proceeding is commenced. . . . [or] commence a lawsuit after the administrative proceeding is concluded if it is not satisfied with the outcome.”

In many cases, it will make sense to pursue both a UDRP action and litigation in court. This may be necessary, for example, if a third party’s use of an infringing domain is actively causing irreparable harm. Here, too, an experienced Florida trademark attorney can assist with choosing the best path forward and taking all necessary legal action on your company’s behalf.

Should You File a UDRP Complaint? Consult with a Florida Trademark Attorney in Confidence

If a third party has registered a domain name that infringes on one of your company’s trademarks, filing a complaint under the UDRP could be essential for protecting your company’s exclusive rights. To learn more, schedule a confidential consultation with a Florida trademark attorney at Lott & Fischer, PL. Call us at 305-448-7089 or tell us how we can reach you online today.