The filing of a UDRP complaint is meant to settle disputes over domain name registrations. Since around 15 percent of all retail sales now take place online, utilizing such a resource to protect your trademark on the internet may be required.
There are many actions that fall under the umbrella of cybersquatting, and all of them will qualify for a UDRP complaint. When a complainant prevails in these proceedings, the Internet Corporation for Assigned Names and Numbers (ICANN) transfers ownership of the domain over to them.
A proceeding through the UDRP is commonly referred to as a “domain dispute.” The UDRP is available to recover a domain name if the owner of the domain registered it in bad faith, or, is violating U.S. trademark laws (such as the Lanham Act) or anti-cybersquatting laws (such as Anti-Cybersquatting Consumer Protection Act).
A UDRP proceeding is not as easy as just filing a form. In a UDRP proceeding, the complainant must first prove that the following three elements are present: Domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
1. That the domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights . The party filing a UDRP arbitration with WIPO or National Arbitration Forum has the burden to show they have trademark rights. Trademark rights can be show by:
Some legal issues include: 1. Domain names dealing with company names that are federally registered trademarks (for example, trademarks that have been registered with the USPTO) 2. Domain names that incorporate trademarked company products (ex. product names that have trademarks, whether federally registered or common law trademark rights) 3.
Complainant has appeared in more than 30 movies, beginning with The Mask in 1994. Prior to Respondent's registration of the <camerondiaz.com> domain name in 1996, Complainant appeared in The Mask, The Last Supper, She's the One, Feeling Minnesota, and Head Above Water.
Paragraph 15 (a) of the Rules instructs this Panel to “decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.”
A domain holder may act in bad faith if its primary intent was to sell the domain name to the trademark owner or one of its competitors for a price in excess of out-of-pocket expenses related to the name. See UDRP 4 (b) (i). In addition, in Mondich v.
Yes, but this will be much more time consuming and costly. It is quicker and much less expensive to hire a UDRP law firm to file a domain name dispute arbitration than it is to pursue a federal trademark infringement action, or a ACPA lawsuit (Anti-Cybersquatting Consumer Protection Act).
The UDRP essentially protects businesses from abusive or bad faith registrations. However, like all contracts, there is more to it than that. You can read the full UDRP here, or find the essential elements, below.#N#To have a domain name transferred, a complainant must prove:#N#• That the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and#N#• The respondent has no rights or legitimate interests in respect of the domain name; and#N#• The domain name has been registered and is being used in bad faith by the respondent#N#The Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) is the process used to resolve disputes over internet domain names. But its use is not risk-free. A plaintiff who complains about a domain name in bad faith can be found to have committed reverse domain name hijacking (“RDNH”). And in this recent decision, a UDRP panel found that even where the complainant sought to withdraw his complaint before a decision issued, he could still be found to have committed RDNH. This case thus offers several important lessons to would-be UDRP complainants.#N#• Do not file frivolous UDRP complaints: Complainants typically file unwinnable UDRP complaints because either they do not understand the UDRP rules or they hope to coerce a domain registrant to transfer the domain. Both can lead to findings of RDNH. The fact that the panel refused to dismiss this case once Blue Nova had filed its response and asserted RDNH demonstrates the perils of both mistakes.#N#• Research your case before filing: Asserting trademark rights that do not pre-date the disputed domain name’s creation date is one of the most common reasons UDRP panels find RDNH.
The UDRP (Uniform Domain-Name Dispute-Resolution Policy) is a set of rules found in every Domain Name Purchase Agreement that defines how domain name disputes should be decided . The UDRP generally applies to top-level domains such as .biz, .com, .info, and .org—to name a few. By signing the mandatory Domain Name Purchase Agreement when purchasing a domain, registrants “represent and warrant” that the registration “will not infringe upon or otherwise violate the rights of any third party,” and agree to an arbitration-like proceeding if such a claim should arise. While the UDRP is mandatory for domain holders, it is an optional procedure for mark holders. With the rise of the Internet in the early ‘90s came the use of trademarks as domain names without the owner’s consent, also known as “The Trademark Dilemma.” By 1998, the non-profit corporation ICANN (the Internet Corporation for Assigned Names and Numbers) was formed to assume responsibility for IP address space allocation, top-level domain name system management, and root server system management functions. In other words, ICANN ensures corporate trademark are not held ransom by those who register a certain domain name before the company can.
The Uniform Domain-Name Dispute Resolution Policy (UDRP) is a mandatory arbitration process agreed to by almost everyone who registers a domain name.
A proceeding through the UDRP is commonly referred to as a “domain dispute.”. The UDRP is available to recover a domain name if the owner of the domain registered it in bad faith, or, is violating U.S. trademark laws (such as the Lanham Act) or anti-cybersquatting laws (such as Anti-Cybersquatting Consumer Protection Act).
While the initial fee is more than the fee to file a lawsuit in federal court, the cost of filing and serving a federal lawsuit will quickly dwarf the fees paid in a UDRP filing, which consists of: After the above briefs are filed, the arbitrator makes the decision based on those briefs.
The Uniform Domain Name Dispute Resolution Policy (UDRP) is one of the many protective tools available to trademark owners. The filing of a UDRP complaint is meant to settle disputes over domain name registrations. Since around 15 percent of all retail sales now take place online, utilizing such a resource to protect your trademark on the internet may be required.
The UDRP was created to protect owners of trademark owners from cybersquatting. This occurs when a third party registers, uses, or sells an internet domain name in bad faith. The goal in doing this is financial.
WIPO handles around 3,500 cases per year, and they are typically more cost effective – especially in cases of multiple domain registrations. While the paperwork is extensive, the filing process has been simplified. WIPO has a dedicated page for those wishing to submit a complaint.
Respondent has 20 days from commencement to file their response. Within five days of a response or the expiration date for filing one, a panel must be appointed. Panel has 14 days – except in “extraordinary circumstances” – to reach a decision.
If you submit your claim incorrectly or fail to support your case, though, you could forfeit your filing fee while receiving no legal remedies for protecting your trademark.
Expected deadline for a response. Trademark owners also have the option to file a lawsuit under the Anticybersquatting Consumer Protection Act (ACPA). While this can be a lengthier process than a traditional UDRP complaint, it does open the door for financial compensation.
So, for example, in Mascot Media Circle, LLC dba OnlineMBA v. WhoIsGuard, Inc. / Ahmed Guettouche, WIPO Case No. D2015-1209, the complainant failed to establish that it had trademark rights (a requirement of the UDRP's first element) in ONLINEMBA in a dispute over the domain name <onlinemba.com>.
In another case, Ironfx Global Limited v. MR Qaisar Saeed Butt / Moniker Privacy Services, WIPO Case No. D2015-1221, a complainant failed to succeed on the UDRP's second element (that the respondent lacks rights or legitimate interests in the domain name) even without any arguments from the respondent.
The third UDRP element -- that the respondent registered and is using the disputed domain name in bad faith -- is typically the most difficult to prove. So, if a complainant fails to meet its burden here, even if the respondent says nothing, then the complaint will fail.
Adding insult to injury, one recent UDRP decision indicated that the panel gave the complainant an additional opportunity to avoid a loss despite the absence of a response -- but the complainant failed to take advantage of it. The case, TripAdvisor, LLC / Smarter Travel Media LLC v. Domain Admin / Privacy Ltd.
The WIPO Overview, paragraph 4.7, makes clear that the burden of proof in a UDRP proceeding is "'on balance' -- often expressed as the 'balance of probabilities' or 'preponderance of the evidence' standard. Under this standard, an asserting party would typically need to establish that it is more likely than not that the claimed fact is true."