Uniform Domain Name Dispute Resolution Process

What is a Domain Name?

Domain Name is the short text that describes to the computers that run the internet exactly where the computer responsible for your website is. For example, the domain name “burcakbaskan.com” points to the IP address (the address that computers on the internet use to determine location)

Grabbing Domains

When the internet was at its infancy, grabbing nice looking domain names and selling them for large sums was both a valid business and the dream of many. The practice is still common today and many people grab domain names both “nice” and containing well known trademarks, be it for profitable sale or for use in legitimate business.

Here are some of the more common types of domain disputes:

  • The registrant (the person who registered the domain) is/wants to be a dealer of a trademark and uses a domain name that incorporates in whole or in part the trademark.
  • The registrant took the domain name to sell to the trademark owner for large sums of money.
  • A “.com” is registered in one country and it infringes on the trademark registered in another country.

The mud in the water of this type of business is determining who actually has “rights” to a certain domain name. This topic used to be the subject of hot debate and expensive lawsuits. ICANN, the organization responsible for organizing the running of the internet, has set forth a set of rules, defined as the Uniform Domain Name Dispute Resolution Policy (UDRP), that allows the settlement of debate over who has the rights to a certain domain. This process is simple enough to run, much cheaper than a lawsuit and produces results faster.

The UDRP Process

The Uniform Domain Name Dispute Resolution Policy works by appointing a panel of judge(s) who examine a Complaint and any Reponses made to decide with whom the domain name belongs. The judgement of the panel is then declared to the Registrar who transfers the domain to the winner. The whole process ideally takes 40 days though in practice it is nearer two months.

A UDRP Process starts by a Complainant (the party who demands control of the domain name) filing a Complaint with one of the official arbitration bodies of ICANN. Personally i’ve dealth with WIPO (World Intellectual Propery Organization, based in Switzerland) so i will using their name as a general name for all arbitration bodies.  The Complaint is sent simultaneously to WIPO, the Registrar and the Respondent (the party who currently owns the domain name). Once WIPO accepts the case The Respondent (the person who currently owns the domain name) is given 20 days to file a Response, explaining why he has rights to the domain. WIPO then appoints a panel of one or three panelists who take around two weeks to reach a decision.

How is a Complaint Formulated?

There is a format in which Complaints are expected to be filed. The document is accessible from WIPO or from ICANN itself. To demonstrate rightful claim to a domain, a Complainant has to prove the following:

  • that the domain name is identical or confusingly similar to the Complainant’s trademark
  • that the Respondent has no legitimate right or interest in the domain (ie, is not providing bona fide goods and services)
  • that the Respondent registered and is using the domain in bad faith.

The proof should establish that the Complainant has proper claim on ALL three points. Failing to prove any one of the points will usually result in the Complaint being rejected.

Is It Difficult to Prove Claim to a Domain?

While a Complainant might see themselves in being of rightful claim in all three cases, the WIPO panel is an independent, impartial body and they may see things differently. In submitting a winning Complaint, it is important to try to figure out what kind of defense a Respondent could make and make sure the Complaint cover such cases.

A few (and by no means exhaustive) examples of gray areas that need a well-defined Complaint to be successful:

  • The Complainant resides in one country, the Respondent resides in another. They might both have claim to the same trademark, only registered in different countries.
  • The Complainant has a well-known international trademark but the Respondent is an older but much smaller, local business who has been known by that name for a long time.
  • The Respondent is running a legitimate business in that domain. Here, it becomes necessary to define if the Respondent is basing his business on its own merit or on the trademark value of the Complainant.
  • The Respondent is engaged in domain name trading. While this is in most cases an automatic win because of the way most domain name traders operate, domain name trading is NOT considered “bad faith use”. Proving bad faith requires further explanation.

Who are the People Involved?

The nice part of the UDRP process is that it does not require to be filed by a lawyer, greatly reducing filing costs. Both the Complaint and the Response can be submitted by company employees/individuals by simply following the guidelines for submission.

The UDRP panelists are all lawyers. While the panelists are free to form their own decisions, they prefer that their decisions are inline with previous WIPO rulings. All WIPO decisions are publicly accessible. Therefore it is advisable in making a Complaint to reference past cases and decisions reached by those panelists. This is especially important in cases where panelists have previously decided for both sides of an issue. Presenting a Complaint with references to favorable decisions will greatly improve chances of a favorable ruling.

Can This System Be Abused?

Yes. The process somewhat favors large corporations so large corporations tend to file Complaints to any and all domains related to their trademarks but it is not a definite loss for a small company. There are many cases where a small company disproved a complaint by showing that they have legitimate rights to the domain.

What Is My Interest?

I’ve filed several UDRP Complaints for clients. Each submission has been a different experience and i continue to monitor the market for people/companies who think their domain name has been unjustly taken beyond their control. If you have any questions about the process, please ask them in the comments and i’ll edit this article to include answers.