Owning a domain is a very valuable asset. Unfortunately, just because a person acquired a domain name does not automatically mean that they are entitled to or have true ownership rights to that domain.
Should a third party believe that they have superior rights to a domain name over the registrant they can choose to bring a civil action in a court of law or they may choose to handle the matter with the Uniform Domain Name Dispute Resolution Policy (UDRP). Most registrants agree to participate in the UDRP process when they register a domain as it is normally incorporated into the registration agreement.
Having “superior rights” typically means that the third party has a registered trademark or service mark or at least a common law trademark for a the name for which is related to the domain name at issue. Therefore, the third party believes that their trademark protections give them a superior right to the domain name even though they do not own it.
The UDRP was created by the Internet Corporation for Assigned Names and Numbers (ICANN) as the policy used to handle disputes between parties. Instead of being carried out in a court of law, UDRP is enforced through an arbitration process.
The UDRP is administered by an ICANN approved Uniform Dispute Resolution Service Provider. The Complainant gets to choose which Provider will handle its dispute.
The approved Providers are:
- Asian Domain Name Dispute Resolution Centre
- National Arbitration Forum
- World Intellectual Property Organization
- The Czech Arbitration Court Arbitration Center for Internet Disputes
A commonly used Provider is the World Intellectual Property Organization (WIPO), which is an organization that is responsible “ to promote the protection of intellectual property throughout the world through cooperation among states and in collaboration with other international organizations,” as stated on their website wipo.int. WIPO is based out of Geneva, Switzerland and is made up of IP specialists from 184 countries.
There are very specific formats and pleading requirements involved in a UDRP proceeding. The rules and procedures that govern UDRP can be found on the ICANN website. All parties involved in a UDRP proceeding must read the Uniform Domain Name Dispute Resolution Policy, the Rules for Uniform Domain Name Dispute Resolution Policy, and the Provider’s supplemental rules (the World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy in the case where WIPO is the Provider) before filing either a Complaint or Response. These policies contain all pertinent information related to fees, timing, rules and procedures, and pleading requirements.
A third party who wishes to bring a dispute under the UDRP because they feel that the registration of the registrant’s domain name has infringed upon their rights must submit a Complaint to the Provider of their choosing. The Complaint is submitted to the Provider electronically. In fact, all communication and submissions will be submitted electronically during the proceeding.
The Complaint must contain the most up-to-date electronic contact information for the party who registered the domain (the “Respondent”) because it is the Provider’s responsibility to give the Respondent notice of the dispute.
It is important to take note that all future correspondences with the Provider must also include the opposing party.
There is certain information that must be included in the Complaint. That information is outlined in Part 3 of the Rules for Uniform Domain Name Dispute Resolution Policy.
Another vital decision that the Complainant must decide and indicate in the Complaint is whether they elect to have a one or three person panel decide the case. The price for a one-person panel is $1,500.00. The price for a three-person panel is $4,500.00. These prices are the sole responsibility of the Complainant and must be tendered before the proceedings may commence. If the Complainant elects to have a one person panel initially but the Respondent wants a three personal panel the parties split the additional costs due to the Provider. This means that the Complainant would ultimately pay $3,000.00 and the Respondent would ultimately pay $1,500.00.
The Third Party who brings the UDRP dispute (the “Complainant”) has the burden to plead and prove the three-prong test to substantiate their superior claim to the domain name. If the Complainant does not prove all three parts, their Complaint will fail and the Respondent will retain the domain name.
- The first part of the test that the Complainant must plead and prove is that the “domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights”.
- The second part of the test that the Complainant must plead and prove is that the Respondent has “no rights or legitimate interest in respect of the domain name ”.
- The third part of the test that the Complainant must plead and prove is that the “domain name has been registered and is being used in bad faith”.
The Policy suggests some evidence that could be used to substantiate the “bad faith” prong. The list is not exclusive and changes with every new UDRP decision rendered.
After the Complaint is submitted, the Provider will appoint a Case Manager. The Case Manager is the person who manages the submissions of pleadings and handles communications between the parties. The Case Manager is not the person who will arbitrate the case. The Case Manager will review the Complaint to make sure that it complies with all of the administrative rules. If the Complaint is sufficient the Provider will serve it on the Respondent within three (3) calendar days following payment of the fees by the Complainant.
If the Provider finds a deficiency in the Complaint, the Complainant will be notified and will have five (5) calendar days to resolve the deficiency.
After receiving the Complaint, the Respondent will have twenty (20) days to file a response and send it to the Provider. If Respondent needs more time to file the Response they may request more time from the Provider.
If the Respondent chooses not to submit a Response, the Panel will consider the Respondent in default, but will still examine the Complaint to make sure that Complainant met its burden of substantiating the three-part test.
The Respondent has the opportunity in the Response to request additional panel members. In addition, the Policy requires the Response to contain certain other information. This additional information is contained in Part 5 of the Rules for Uniform Domain Name Dispute Resolution Policy.
Although the burden is on the Complainant to substantiate all three parts of the test – - 1) Identical or substantially similar; 2) No legitimate interest; and 3) The domain is being used in bad faith – - the Respondent should try to provide facts that would disprove as many parts of the test as possible, if he/she wants to prevent a negative result.
It is imperative that the Respondent asserts each and every argument that it has to support its claim of superior ownership rights in its Response because the Panel will make its decision based solely on the facts and arguments made in the Complaint and Response. It is also important to note that each Provider imposes a word limitation on the pleadings. For instance, WIPO imposes a 5,000-word limitation for both the Complaint and Response.
The Respondent must submit its Response to the Provider’s Case Manager and to the Complainant within twenty (20) days of receiving the Complaint. The Provider will then appoint the appropriate the Panel within five (5) calendar days. All parties will be advised of the Panel appointment. If the parties elected to have three (3) Panel members, the parties will have to review the Provider’s rules on picking Panel candidates.
According to the Rules for Uniform Domain Name Dispute Resolution Policy, the Panel has fourteen (14) days after appointment to make a decision. The Panel may ask for addition time to submit their decision if exceptional circumstances exist.
The Panel will deliver their final decision via a written opinion that will be electronically delivered to all parties, the Registrar of the domain name, and ICANN, simultaneously. This electronic communication will come from the Provider’s Case Manager within three (3) days after receiving the opinion from the Panel.