When you think of trademark enforcement measures – y’know, as one does – I would wager that the first ones to come to your mind are cease and desist letters and lawsuits. Of course, this is for good reason: the former can be very economical, and the latter can provide closure. However, in the age of information technology, where money is earned and lost depending on web traffic, and a high-demand domain name can command prices in the millions, the value of securing a quality domain name cannot be understated. So what do you do when you, a (legitimate) trademark owner, seek to register a domain for your trademark, and you’re faced with
Well, under certain circumstances, trademarks owners may have another option: filing a “UDRP” complaint.
The UDRP, or “Uniform Domain Name Dispute Resolution Policy” – liberal understanding of acronyms, I know – is a policy adopted by ICANN and mandatorily adopted by all domain registrars. The policy allows the owner of a registered trademark to file a complaint against the registrant of an infringing domain with the goal of cancelling, suspending, or acquiring the offending domain. Complaints are submitted to the dispute resolution service provider of the complainant’s choice, and are reviewed by either a single arbitrator or a panel of three, depending on the parties’ preferences (and budgets). Respondents have 20 days to answer, and once an arbitrator has been appointed, the decision is made within 14 days. From complaint to decision, UDRP proceedings can be resolved in under as little as 60 days.
In order to file a complaint, the aggrieved party must have a trademark. Beyond that, the complaint is fairly straightforward and follows a pretty standard format, though there may be some minor differences between arbitration providers. Generally, the complaint must set forth:
- the name of the complainant;
- the name of the respondent;
- the offending URL and domain registry info;
- the complainant’s relevant trademarks, including descriptions of goods and services;
- the bases for the complaint; and
- the relief sought
Rule 3 of the UDRP Rules describes the specific contents required in a UDRP complaint.
There are currently five providers approved by ICANN: the Asian Domain Dispute Resolution Center, the National Arbitration Forum, the WIPO Arbitration and Mediation Center, the Czech Arbitration Court Arbitration Center for Domain Disputes, and the Arab Center for Domain Name Dispute Resolution. The providers abide by the same UDRP rules of procedure, and they all have jurisdiction to handle UDRP complaints from anywhere, so deciding is mainly a matter of personal preference (and, again, budget). Like U.S. District Courts, however, each provider has its own local/supplemental rules.
Of course, there are drawbacks. As with any legal proceeding, there’s no guarantee of success. A respondent may successfully defend against a UDRP complaint by showing legitimacy of use. Another disadvantage is that, because a UDRP action solely concerns domain name registrations, the scope of relief is narrow and relates only to the complained-of domains and is only applicable against the named domain registrant of record. To that end, a UDRP decision against an infringing respondent won’t (necessarily) put them out of business, especially if (a) they own many domains, or (b) the named domain registrant is different from the actual infringer. Moreover, while a UDRP action is cheaper and quicker than litigation, the up-front cost is still substantial: the filing fee for a single-arbitrator proceeding is in the neighborhood of roughly $1500 across all five providers, give or take a couple hundred. Given the costs and risks associated with UDRP proceedings, it is likely an avenue best used by owners of registered trademarks or owners who have already invested heavily in their trademarks.
- Quick turnaround
- High up-front cost
- Narrow relief
- No guarantee of success
UDRP complaints are a helpful trademark enforcement tool, especially today, where domain names are a valuable commodity. The relatively low cost and quick turnaround make it a good intermediate step for those aggrieved trademark owners who have already sent (multiple) cease and desist letters, and who have the resources to litigate but are not yet ready to make the commitment.
As always, if you have any questions, feel free to contact me!