By Steve Levy
For those who may be learning about this for the first time, or just want a quick refresher, the Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a specialized arbitration process created by the Internet Corporation for Assigned Names and Numbers (ICANN) to resolve disputes over domain names more quickly and at lower cost than is possible through national courts. UDRP cases are handled by a small number of independent dispute resolution providers around the world, such as the World Intellectual Property Organization (WIPO), the National Arbitration Forum (NAF), the Czech Arbitration Court (CAC), the Canadian International Internet Dispute Resolution Centre (CIIDRC), and the Asia Domain Name Dispute Resolution Centre (ADNDRC).
These entities conduct UDRP cases online and through documents only. There are very limited legal and evidentiary tools and, unlike court-based litigation, such things as discovery, document production, witness testimony, cross-examination, hearings, and motion practice are not part of the process. UDRP cases may be filed against a domain owner (called the “Respondent”) regardless of where they are in the world (i.e., there are no jurisdiction or venue limitations) and are decided by expert arbitrators who are known as “panelists”. A UDRP panel may consist of either one or three people depending on what the parties select and what amount of fees they are willing to pay.
UDRP decisions are legally binding on domain registrars, meaning they can lead to the cancellation of domain names or a forced transfer of the domain name from a losing Respondent to a winning Complainant. However, they do not prevent either party from later challenging the outcome in a national court, which may overrule the UDRP decision. Also, the transfer (to the Complainant) or cancellation of a disputed domain name are the only remedies available in a UDRP case. Other remedies such as damages, attorneys’ fees, equitable injunctions, etc. are not part of the process.
Unlike national courts, UDRP cases follow a very limited and streamlined process that usually lasts from two to three months. The major steps are as follows:
- Filing the Complaint – A trademark owner files a complaint with an ICANN-approved dispute resolution provider.
- Registrant’s Response – The Respondent has an opportunity to respond and defend their rights within 20 days of when they are served with the Complaint documents by the dispute provider.
- Panel Review – A panel of one or three arbitrators reviews the case and determines whether:
- The disputed domain name is confusingly similar to the Complainant’s trademark;
- The Respondent lacks legitimate rights to the domain name; and
- The domain name was registered and used in bad faith.
- Decision & Enforcement – If the Complainant wins, the domain is transferred or canceled within ten business days during which time a losing Respondent may file a court action against the Complainant seeking to prevent enforcement of the order. If the Respondent wins, they simply keep the domain name.
- Because the UDRP is an alternative dispute resolution (ADR) system, it operates independently of national courts. However, dissatisfied parties can still file a lawsuit in a national court, which may override the UDRP decision.
A very high percentage of UDRP cases are decided on default (i.e., no Response is filed). However, unlike in some courts, the default of a Respondent does not guarantee success. Complainants must still meet their burden of proof by submitting appropriate arguments and supporting evidence. If a panel is not convinced, by a “preponderance of the evidence” (more likely than not standard of proof) that the UDRP has been violated, it will deny the case, even in the face of non-participation by a Respondent.
Although limited in scope, the UDRP process offers a fast and cost-effective way for trademark owners to resolve domain name disputes. Should you have any questions or want to explore a particular dispute further, please contact a FairWinds representative for further information.