There are four simple letters that speak volumes in the domain name industry, UDRP.
UDRP stands for Uniform Domain Name Resolution Policy. A UDRP is the process by which a trademark holder petitions ICANN (international governing body of domain names) for control of an infringing domain name.
The UDRP process was created to help companies bypass the lengthy and often impossible process to obtain a trademark infringing domain via traditional litigation.
The UDRP is exceptionally effective in dealing with cybersquatting on Domain names, particularly where the disputes are often
international in nature.
To those not actively investing in domain names, this sounds like a fantastic solution to a common problem. In many situations, it’s great tool for those with a rightful claim to a domain name to acquire the intellectual property from those who attempt to profit via infringing on a trademark.
However, as with anything, it’s not a perfect system. In fact, it’s often the better course of action would have been to purchase the domain name outright.
The UDRP is handled via arbitration in lieu of litigation. While the litigation route is still possible, it’s seldom used and much costlier than simply filing a UDRP. In a UDRP a panel of either 1 or 3 arbiters are appointed who will decide the outcome of your filing. Depending on the jurisdiction there are several Dispute Resolution Providers whose arbiters’ decide the outcome of your filing.
During these proceedings, the arbiter(s) will decide if the domain owner registered the domain in bad faith to target a trademark owner. Should the arbiter(s) reach the decision that the domain registrant registered and used the domain name in bad faith, they will order it to be transferred to the complainant.
As UDRP proceedings are fairly new and the arbiters are usually from a variety of backgrounds, there are countless records of highly inconsistent rulings. There are cases where it’s questionable that a seemingly infringing domain owner won a UDRP. There are also cases in which a UDRP was won that was filed on behalf of a company that didn’t exist when a domain was created.
It seems that as more and more companies recognize the importance of a domain name strategy, more groundless UDRPs are being filed. I’ve met quite a few people who are familiar with a UDRP. However, I’ve met fewer who have heard of a Reverse Domain Name Hijacking.
Reverse Domain Name Hijacking is the abuse of the UDRP process. It’s the attempt to acquire a domain name in bad faith. While monetary damages are not typically part of Reverse Domain Name Hijacking filings, there have been cases where they’ve been awarded to a domain registrant before.
it is not unusual for companies to try to use the UDRP when they actually have no right to the domain name, and are just trying to coerce the transfer of it from a lawful registrant. This often happens when the domain name was registered before a claimant’s trademark rights arose.
Absolutely! A domain like Disney-MickeyMouse.com is a pretty clear case of trademark infringement. The UDRP process exists to protect trademark holders from those who seek to profit off their hard work. The point I’m trying to get across is that filing and successfully winning a UDRP can be quite convoluted and not without risks.
Filing a UDRP to simply circumnavigate the requirement to
pay for a domain is not a suggested course of action. Should one file a UDRP and lose, the chance of obtaining the domain for the previous price is likely non-existent. It’s also important to consider the overall amount of time and money this process requires without even certainty of success.
It’s important that you consult a qualified and experienced UDRP and domain professional. Zak Muscovitch of DNattorney.com does a stellar job with this and can help advise you on the best course of action regarding filing and handling your overall UDRP proceedings. However, should pursuing the domain make the most sense, we’re more than happy to lend a hand at Lumis!