Chilling Effects Clearinghouse > UDRP > Frequently Asked Questions
Frequently Asked Questions (and Answers) about UDRP
Q: What is the UDRP?
Q: What's in it for me?
Q: Why not go to court?
Q: How was I supposed to know that my domain violates somebody else?s rights?
Q: Why do trademarks get such special protection?
Q: Isn?t the registration process "first come first served"?
Q: How can I lose a domain registration in a UDRP?
Q: What is a protectable "right or legitimate interest" in a domain name?
Q: What is "bad faith" registration or use?
Q: Who are the UDRP "Providers"?
Q: Who are the UDRP "Panelists"?
Q: What are the consequences of the proceeding?
Q: What is Reverse Domain Name Hijacking?
Q: Can a domain name holder bring a UDRP complaint to establish his or her right to the domain name?
Q: Where can I get more information?
Q: Where can I find the text of the UDRP?
Question: What is the UDRP?
Answer: The Uniform Domain Name Dispute Resolution Policy (?UDRP?) is an online procedure for resolving complaints made by trademark owners about domain names. It isn't a court nor is it an arbitration, but the authority that established it in 1999 (ICANN) has the power to order the deletion or transfer of domain names. ICANN requires the domain registrars in .biz, .com, .info, .org, and .net to abide by the results of UDRP proceedings. They must cancel or transfer a domain registration as a UDRP Panel directs. Domain holders agree to this procedure in their domain registration contracts.
The UDRP Policy explains what trademark owners have to prove in order to take a domain name away from the holder, as well as what domain name holders can use to show that they should be allowed to keep the domain registration.
The UDRP Rules outline the actual process for filing a complaint (if you are a trademark owner) and for responding to a complaint (if you are the domain name holder). The Policy and the Rules also explain some of the basics of the proceedings, such as how to chose a Provider, how Panels make their decisions, how the parties are notified of the outcome, what language will be used in the proceeding, the availability and effect of court proceedings, and the types of remedies available.
Each of the Providers also has its own Supplemental Rules to cover all the bases. The UDRP currently applies to .com, .org, .net, and a few country code top level domains (ccTLDs) including .ac, .mx, and .tv. It will soon apply to the new generic top level domains (gTLDs) .info and .biz.
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Question: What's in it for me?
Answer: If you are a trademark owner, the UDRP may provide a faster, cheaper, and easier alternative to filling your complaint with a court of law. If you are a domain name holder, you became bound by ICANN's UDRP when you registered the domain name. The Registration Agreement (to which you agreed with a mouse click) incorporates the UDRP. Therefore, if your domain name is later challenged, you must submit to a "mandatory administrative proceeding" to determine rights to the domain. It does not matter whether the trademark owner and domain name holder live in different countries. Your domain registrar (from whom you obtained the domain) has the power and obligation to enforce the decision of the UDRP Panel. If you refuse to participate, the proceeding may continue without you and your domain could be cancelled or transferred without your input.
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Question: Why not go to court?
Answer: As mentioned above, the UDRP is supposed to provide a faster, cheaper, and easier alternative to challenging domain names in courts of law. Unless the domain holder fails to appear in court, it is likely that the UDRP proceeding will take less time (about 6 weeks). UDRP proceedings generally cost less (as little as $750) since the dispute resolution Providers charge a flat fee and since the costs of hiring a lawyer (if you choose to use one) will generally be less because the types of documents used in UDRP proceedings require less time to prepare. The UDRP procedures are supposed to be simple enough that an average person would not need legal assistance. There is no charge to the domain holder, unless s/he requests a 3-person Panel or opts to hire an attorney. An important advantage of the UDRP over courts is that courts can only enforce their orders within their own territories. The UDRP can be enforced against all domain holders in .com, .org, .net. .biz and .info, regardless of where they live.
Of course, nothing in the UDRP prevents either the trademark owner or the domain name holder from choosing to go to court before, during, or after the UDRP proceeding. You just have to let the Panel know if you have begun court action so the Panel can decide whether to postpone the proceeding or so that the Registrar won?t implement the Panel?s decision until the court reaches its own decision.
In fact, it is sometimes preferable to go to court rather than use the UDRP proceedings. The UDRP was not intended to resolve complex trademark infringement questions. Rather, the UDRP proceedings were intended to focus on abusive domain name registration practices like cybersquatting, where people register domain names that have nothing to do with their personal interests or business in order to take commercial or financial advantage of the mark owner. Some UDRP Panelists have little trademark experience and may not recognize some of the limitations on mark rights. UDRP cases have been wildly inconsistent, depending on who sits on the Panel. Mark owners and domain holders, both, may prefer to have their dispute resolved in a local court which will apply laws that are familiar and consistent.
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Question: How was I supposed to know that my domain violates somebody else?s rights?
Answer: It is the domain name registrant?s responsibility to make sure that the domain does not infringe or violate someone else?s rights. According to the Policy, by applying to register or renew a domain name, you are saying that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations.
Of course, you aren?t expected to look up trademark registrations around the world or research legal issues like common law trademark rights. That?s why the Policy requires the trademark owner (the complainant) to prove bad faith and why the Policy offers domain name holders the opportunity to demonstrate that they have rights or legitimate interests in the domain name. As mentioned above, the Policy was primarily intended to deter abusive domain name registration practices, not punish ordinary domain name holders who register a family name for the purpose of putting family news and pictures online or to prevent people with a legitimate business from registering a name they are commonly known by and then offering bona fide goods and services online.
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Question: Why do trademarks get such special protection?
Answer: Consumers reap the benefit when trademarks are protected. By preventing anyone but the actual mark owner from labeling goods with the mark, it helps prevent consumers getting cheated by shoddy knock-off imitators. It encourages mark owners to maintain quality goods so that customers will reward them by looking for their label as an indication of excellence. Consumers as well as mark owners benefit from trademark laws.
Trademark owners spend a lot of time, money, and effort to protect the distinctiveness of their trademark. Once trademarks have become diluted to the point where the general public no longer recognizes them as distinctly applying to a particular manufacturer, they lose their value to the trademark owner because they no longer attract customers to his particular goods. For example, ?aspirin? used to be the trademark of one particular manufacturer of synthesized acetylsalicylic acid, but is now used to generically describe that product regardless of who produces it. Trademarks owners must be vigilant to make sure that their trademarks rights are not being infringed and that their trademarks are not becoming diluted or generic.
The birth of the Internet and the use of character strings (domain names) to represent Internet addresses has presented trademark owners with a whole new set of problems. It is often too expensive to register every variation of a trademark in every top level domain. Therefore, trademark owners must make sure that the people who register domain names that are either the same as or confusingly similar to a trademark are not using the domain name in a way that infringes on the trademark. One way to ensure that the trademark owner will not lose its rights in the mark is to file a UDRP complaint so that the Panel can decide whether the domain was registered in order to take unfair advantage of the mark owner. The Panel may decide that the trademark owner was wrong and had nothing to worry about, but unless the trademark owner is vigilant and files the complaint, it may never know for sure whether its rights were being abused.
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Question: Isn?t the registration process "first come first served"?
Answer: Yes, as long as you have registered and used the domain name in good faith or have legitimate interests in the domain name. However, you have no right to violate trademark law, or ignore your Registration Agreement, or engage in cybersquatting just because you registered the name first.
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Question: How can I lose a domain registration in a UDRP?
Answer: The trademark owner must prove three things: (1) that s/he has a trademark right that is identical or confusingly similar to your domain, (2) that you have no right or legitimate interest in the domain name, and (3) that you registered and used the domain in bad faith.
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Question: What is a protectable "right or legitimate interest" in a domain name?
Answer: If the domain holder has a right or legitimate interest in the domain name, then s/he is entitled to keep it, under the UDRP. The Policy gives some examples of rights and legitimate interests, but the contestants and Panelists may develop others. The Policy recognizes a right if (a) you are commonly known by the domain name (as a personal or business name), (b) if you are using it for legitimate noncommercial or fair uses without intent to mislead consumers or tarnish the mark owner (for example if the term is being used to generically describe what the website is about, such as ?newyorknews?) or (c) if you were using the name in a bona fide effort to sell goods or services (or you can demonstrate that you were preparing to do so) before you had any notice of the trademark owner?s complaint.
The UDRP allows the Panelists to determine other circumstances of rights or legitimate interests on a case-by-case basis. Some of them have included the right to use the domain if you are a legitimate reseller of the marked goods, or acquired the domain before the trademark owner acquired trademark rights in the name.
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Question: What is "bad faith" registration or use?
Answer: Facts that are considered as evidence of bad faith are described in the UDRP Policy. They include acquiring the domain name primarily for the purpose of selling or renting it to the mark owner (or the mark owner?s competitor) for money or other value that greatly exceeds the costs of the domain name. This is the typical situation that the courts have called "cybersquatting."
Another circumstance that will be considered evidence of bad faith is a pattern of registering domain names in order to prevent the mark owners from using their marks as domain names; also, if you register the domain name primarily to disrupt a competitor?s business. If you intentionally use the name in a manner that confuses or misleads users into believing that your site is affiliated with or endorsed by the mark owner, and you are getting commercial value from that confusion, you will also be considered as acting in bad faith.
Panelists are also allowed to determine whether other acts, not specified in the Policy, may also amount to bad faith. For example, false or inaccurate contact information on the registration is frequently considered evidence of bad faith.
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Question: Who are the UDRP "Providers"?
Answer: The Providers are organizations that have been approved by ICANN to resolve UDRP
disputes. The four are: World Intellectual Property Organization ("WIPO"); eResolution Consortium ("eRes"); the National Arbitration Forum ("NAF"); and CPR Institute for Dispute Resolution ("CPR"). Since the trademark owner chooses the Provider, the trademark owner should be aware that the Providers differ in some respects. For example, each one may have its own supplemental rules, charge different fees, or have different page restrictions for the complaint and response. Relative to each other, some providers are statistically more inclined to favor the trademark owner.
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Question: Who are the UDRP "Panelists"?
Answer: The Panelists "judge" the UDRP disputes and determine what happens to the domain name. They include practicing attorneys, law professors, and former judges. Each Provider maintains a list of eligible panelists and their qualifications. Panelists are required to be impartial. However, panelists may have certain biases (such as those who interpret the Policy conservatively to restrict its use to specific types of cybersquatting), so parties may wish to research the statistics on how any given panelist has decided disputes in the past. Such information is available at
http://www.UDRPinfo.com.If neither the trademark owner nor the domain name holder has elected a three-member Panel the Provider chooses a single Panelist from its list of panelists. If either the trademark owner or the domain name holder chooses to have the dispute decided by a three-member Panel, then the parties themselves have a voice in the selection of the Panelists. In these cases, the Provider chooses one Panelist from the trademark owner?s list of three nominees and one Panelist from the domain name holder?s list of three candidates. These candidates may come from any of the four Providers? lists. The Provider handling the pending case nominates five candidates to preside over the Panel and asks the contestants to express preferences among them, which the Provider must take into account when making its selection.
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Question: What are the consequences of the proceeding?
Answer: The Panel may cancel a domain name or order the transfer of the registration to the trademark owner or decide to leave the registration with the domain holder. If it cancels the domain registration, the domain will go back on the market for anyone to grab, so this is not an option that most trademark owners would request. If the domain name holder loses, the Registrar will wait 10 business days before implementing the Panel?s decision so that the domain name holder has the chance to file a lawsuit in court of law. If the domain name holder files a lawsuit, the Registrar will take no further action until it receives notice that the dispute was settled or that the lawsuit was dismissed or withdrawn.
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Question: What is Reverse Domain Name Hijacking?
Answer: Trademark owners may not file complaints just to harass domain name holders. Under the Policy, trademark owners who file complaints in bad faith are said to have engaged in "Reverse Domain Name Hijacking." It is considered an abuse of the administrative proceeding and the Panel can enter such a finding in the record to warn others about such a trademark owner.
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Question: Can a domain name holder bring a UDRP complaint to establish his or her right to the domain name?
Answer: No. Only mark owners can start a UDRP proceeding. A domain holder must file for a protective restraining order or declaratory judgement in a court of law.
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Question: Where can I get more information?
Answer: The following websites provide basic information related to the UDRP:
The UDRP Policy:
http://www.icann.org/udrp/udrp-policy-24oct99.htmThe UDRP Rules of Procedure:
http://www.icann.org/udrp/udrp-rules-24oct99.htmAsian Domain Name Dispute Resolution Centre:
http://www.hkiac.org/main.htmlCPR Institute for Dispute Resolution:
http://www.cpradr.org/home1.htm The National Arbitration Forum:
http://www.arbforum.com/World Intellectual Property Organization
http://arbiter.wipo.int/domains/>>top
Question: Where can I find the text of the UDRP?
Answer: The Uniform Domain-Name Dispute-Resolution Policy is at
http://www.icann.org/udrp/udrp.htm. The UDRP Rules are at
http://www.icann.org/udrp/udrp-rules-24oct99.htm. Each UDRP Provider has additional Supplemental Rules which are linked from the ICANN UDRP page at
http://www.icann.org/dndr/udrp/ where there are also links to the large body of UDRP Panelist opinions interpreting the UDRP and materials on the history of the procedure.
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