Domain Name Dispute Guide: How To File A UDRP Complaint? 

Trademarks are very beneficial to businesses that have a presence both in the real and the virtual world. Specifically in the virtual world, where e-commerce is rapidly growing, businesses make use of domains to promote and advertise their products and/or services online. In a way, the domains become a part of branding for the businesses. 

Here, trademarks are an excellent source of protection from the infringers constantly lingering on this platform. Since the domains contain the website’s trademark, they must be extended the same protection as the brand logo and name. Due to the influx of domains, disputes over domain names are endless.

It has become a common occurrence that third parties or infringers are using domains of already-established brands to exploit the goodwill and reputation of those brands. The solution to these issues lies in the Uniform Domain-Name Dispute-Resolution Policy (UDRP). This blog will guide you on what uniform domain name dispute resolution is and what is the process for filing a UDRP complaint.

What is UDRP?

When registering a domain name, going through a mandatory arbitration called the UDRP proceeding is important. The dispute resolution service is established by the Internet Corporation for Assigned Names and Numbers (ICANN) which allows trademark registration owners to file a complaint against any infringers hijacking the owner’s trademark rights over the domains. 

Eligibility Criteria for Domain Name Dispute Resolution Policy

Before filing for the dispute resolution for your domain, it is important to know if you fulfill the criteria for initiating the proceedings. The following conditions are to be satisfied:

•  The disputed domain is identical or similar to the mark of the trademark owner.
• Abusive registration of the domain i.e. the owner of the disputed domain name registration possesses no legitimate rights or interests in the domain.
• The registration was done in bad faith.

Guide To File A UDRP Complaint

Before filing, the complainant has to choose a resolution service that will administer the entire process. Notable ones include the World Intellectual Property Organization (WIPO), the National Arbitration Forum (NAF), and the Forum for Domain Name Dispute Resolution (also known as the Forum). Since each service provider would have a varying procedure and fees, it is essential to go through their procedure manual and fee structure beforehand.

1. What is Included in the Complaint?

The complaint usually contains the following elements:

1. Information of the complainant: The complaint needs to have complete details of the complainant, which includes their name, contact details, and information of the authorized representative, if any.

2. Name of the Domain in dispute: The disputed domain name alongside the extension used (for instance .com, .net, etc) must be specified.

3. Information of the Respondent: This pertains to the details of the person who has registered the disputed domain.

4. Grounds for the complaint: This is an important part of the complaint. This section will outline the reasons for filing for the dispute resolution. Refer to the discussion above in the ‘Eligibility Criteria’ section to know the UDRP grounds.

5. Evidence: All the relevant evidence that proves the original ownership of the trademark registration owner as well as substantiates the claims made. Evidence can include trademark registrations, proof of the respondent’s malafide intention behind the registration, and any other relevant document that proves the claims.

6. Request for Remedies: The complaint is ended with the remedies the complainant desires from the panel. 

2. The Complaint Reviewed and then forwarded to the Respondent

After receiving the complaint, it is reviewed by the arbitration service and after getting approved, it is forwarded to the respondent either through mail or email. 

3. Response to the Allegations

When the respondent receives the complaint, they have the opportunity to respond to the allegations made in the complaint. The respondents have a limited timeframe in which they have to explain their side of the story and substantiate this with evidence. The time for the said submission is twenty days.

4. Panelists Appointment

A panel of experts is appointed to carry out the entire dispute resolution procedure. The panel consists of experts and professionals who hold expertise in trademark law and domain disputes. The panel is tasked with independently, neutrally, and impartially reviewing the complaint and deciding in favor of the party rightful for getting the remedy in light of the evidence provided. 

5. Decision Informing

After the review stage, the arbitration panel makes a decision and accordingly informs the parties. The verdict is typically delivered within three days. If the case is decided in favor of the complainant, the order is to transfer the domain to the complainant. If it is in favor of the opposing party, then no transferring occurs, and the complaint is rejected. 

6. Appealing the Decision

The avenue of appealing the decision is also available in certain cases. The UDRP has provision for appeal which is an opportunity for additional review, thus ensuring justice and fairness. However, the disadvantage is that this option is available in limited circumstances and not every decision can be brought to review

. The grounds generally catered to in the appeal usually pertain to procedural errors or new evidence that was not present in the initial stage.

Alternative Routes 

There are other alternatives available for resolving the issues of disputed domains. 

• Negotiation: This includes parties sitting down and directly negotiating and deciding upon the settlement.
• Mediation: This involves resolving the issue through negotiation however with the addition of a mediator. 
• Filing lawsuit: A lawsuit can also be filed if the dispute is complex and involves numerous legal issues. This route allows for resolving the issue in the judiciary. 

Conclusion

A UDRP complaint is a systematic process for resolving disputes of domains. In a world where the domains are the foundations of e-commerce and a brand’s presence in the virtual world, intellectual property rights violations are inevitable. To protect your brand from these problems, the UDRP avenue allows you to acquire the same rights as granted to your trademark under the trademark law. By understanding the eligibility criteria for the complaint as well as how to file it, you are well on your way to protecting your rightful domain name from infringers. 

If you need assistance in filing a complaint under UDRP or have any other trademark-related concerns, we’d be happy to schedule a discovery call with you. During this call, we can discuss your situation in more detail and come up with a plan tailored specifically for you.