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| Jane Lambert |
18 July 2017
It is important to note at the outset that the UDRP does not apply to all domain name disputes. Only to those between trade mark owners and domain name holders where cybersquatting is alleged. The jurisdiction to refer a case to administrative proceedings arises only upon a complaint that:
- The domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
- The person who applied for registration has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
Does the UDRP apply?
The UDRP applies to disputes relating to all gTLD names (eg. .aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel and .travel) plus new ones such as .technology, .ruhr. .london, .lawyer and .microsoft). The UDRP also applies to many ccTLD names with or without local variations. If you simply want the suspension of a new gTLD name and not its transfer and cancellation you may wish to consider the Uniform Rapid Suspension (“URS”) process as an alternative to the UDRP.
Identifying the Respondent
The “Respondent” is the person who has to answer your complaint. You can often find out who has registered the domain name from a “whois” search of the registry or in some cases the registrar that registered the disputed domain name.
Sometimes the person who registered the domain name appoints a privacy service to hold the domain name just as a bank or stockholder often holds its customer’s stock on bare trusts as nominee. Some complainants get very cross about that privacy services and argue that using one is an act of bad faith in itself. I see nothing sinister in them at all. The holder of a domain name may have all sorts of reasons for not wishing to advertise that he or she has registered a particular domain name. Using a privacy service diverts a lot of spam for a start. Most privacy services disclose the name and contact details of the registered holder to the dispute resolution service provider and complainant as soon as they learn that there is a serious dispute.
Write a Letter before Complaint
Although complaining under the UDRP costs a lot less than litigation it is not without some expense. There are the dispute resolution service provider’s fees which are irrecoverable plus your legal adviser or patent or trade mark attorney’s (also irrecoverable) if you instruct one or the value of your own time if you don’t. Writing a polite but firm letter costs a lot less. The letter should set out your case, ask by what right (if any) the respondent claims a right or interest in the domain name and offer to refund his or her expenses of registering and transferring the domain name which are unlikely to be more than a few pounds.
If the respondent is a decent sort, he or she may well take you up on your offer in which case you save yourself a lot of time and money. Even if he or she does not take up your offer, the letter may still assist you in the administrative proceedings because the respondent may try to haggle with you over reimbursement which would an act of bad faith of itself. Any failure to answer the question by what right the respondent claims a right or interest in the domain name helps you to assert that he or she has no rights or legitimate interests in the domain name.
If you, your lawyer or patent or trade mark attorney want help with such a letter, I shall be glad to draft one for you for which my clerk rarely charges more than £500 or the equivalent in euros or US dollars if you would care to call him on +44 (0)20 7404 5252 or send me a message through my contact form.
Preliminary Reading
Unless you are already familiar with the UDRP, I strongly recommend your reading the following documents:
- The UDRP itself;
- The UDRP Rules;
- The supplemental rules of each of the dispute resolution service providers; and
- The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition.
Select a Dispute Resolution Service Provider
The person or persons who will decide your dispute (“The Administrative Panel”) will be appointed by a dispute resolution service provider. Unless you elect to bring your dispute before a three member panel (which is a lot more expensive than a single member panel) you don’t get a say as to who decides your case. If you think language or culture may be important to your case, you may want a panellist who speaks that language or understands that culture. In that case, you will opt for a service provider with a lot of panellists with that language or understanding.
If costs are important, each service provider has a slightly different fee structure. For instance, the WIPO charges US $1,500 for a single panellist to decide a dispute involving up to 5 domain names (see WIPO’s Schedule of Fees) while the Forum charges US $1,300 for a single panellist to decide a dispute involving one or two domain names (see UDRP Filing Fees).
Fill in the Complaint
All the dispute resolution service providers have a standard complaint form which they ask you to use. It is a cross between an English statement of case or pleading and a witness statement. Some allow you to download a template in Word which you can complete offline and email to the service provider as an attachment. Others require you to file your complaint online. Either way, it is probably easier to make a draft on the template. Most of the form is straightforward and requires no guidance but Part VI is an exception.
The Domain Name is identical or confusingly similar to a Trade Mark in which you have Rights
Paragraph 4 (a) (i) of the Policy requires you to prove that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which you have rights.
Fill in the Complaint
All the dispute resolution service providers have a standard complaint form which they ask you to use. It is a cross between an English statement of case or pleading and a witness statement. Some allow you to download a template in Word which you can complete offline and email to the service provider as an attachment. Others require you to file your complaint online. Either way, it is probably easier to make a draft on the template. Most of the form is straightforward and requires no guidance but Part VI is an exception.
The Domain Name is identical or confusingly similar to a Trade Mark in which you have Rights
Paragraph 4 (a) (i) of the Policy requires you to prove that the disputed domain name is identical or confusingly similar to a trade mark or service mark in which you have rights.
Note the indefinite article. You have to point to only one trade mark that is identical or confusingly similar to the domain name. The trade mark does not have to be in any particular country though if there is a choice of equally similar trade marks I would choose one in the respondent’s jurisdiction.
The mark does not have to be registered. You can rely on the law of passing off or some similar cause of action if you do not have a registered mark. You do not need to point to more than one trade mark. It is amazing how many complainants exhibit every trade mark that they have in every jurisdiction in which they have a registration whether it is similar to the disputed domain name or not.
Similarly, they write screeds on whether those trade marks are the same as or confusingly similar to the domain name and cite mountains of authority for the obvious proposition that the TLD suffix (“.com”, “.net” et cetera) can be regarded. It is a complete waste of time and their clients’ money and nothing does more to irritate the panellist than that. He or she has to read all that verbiage for which he or she is paid US $1,000 which is a lot less than most panellists can charge for writing an opinion or other work that they could do during the same time. Similarity is a matter of impression. It is for the panellist to judge whether a name is the same as or similar to the trade mark upon which you rely using his or her common sense.
Unless the complainant relies on the law of passing off or some similar cause of action there is no need for lengthy public relations or marketing spiel. The most that would be required are sales and advertising figures by reference to the mark relied upon and any similar evidence of goodwill that may be available.
The Respondent has no Rights or Legitimate Interests in Respect of the Domain Name
At first sight, this provision requires you to prove a negative. In fact, all you need to do is raise a presumption. You ought to be able to say that you have not licensed or authorized the Respondent to register the domain name. You may also be able to say that you have made reasonable enquiries to find out whether any of the circumstances set out in paragraph 4 (c) (i), (ii) and (iii) and you have found no evidence that they do. You may be able to add that you can think of no other circumstances that would amount to rights or legitimate interests in the domain name. If the Respondent has failed to respond to a request in a letter before complaint to explain why he or she claims a right or interest in the domain name you can annexe the letter. It is then up to the Respondent to rebut the presumption and if he or she doesn’t respond to the complaint, he or she will not be able to do so.
The Domain Name has been registered and is being used in Bad Faith
You have to prove both registration and use in bad faith. That may sound daunting but you are assisted by paragraph 4 (b) of the Policy which lists a number of circumstances that, if found to be present, shall constitute evidence of registration and use in bad faith:
Similarly, they write screeds on whether those trade marks are the same as or confusingly similar to the domain name and cite mountains of authority for the obvious proposition that the TLD suffix (“.com”, “.net” et cetera) can be regarded. It is a complete waste of time and their clients’ money and nothing does more to irritate the panellist than that. He or she has to read all that verbiage for which he or she is paid US $1,000 which is a lot less than most panellists can charge for writing an opinion or other work that they could do during the same time. Similarity is a matter of impression. It is for the panellist to judge whether a name is the same as or similar to the trade mark upon which you rely using his or her common sense.
Unless the complainant relies on the law of passing off or some similar cause of action there is no need for lengthy public relations or marketing spiel. The most that would be required are sales and advertising figures by reference to the mark relied upon and any similar evidence of goodwill that may be available.
The Respondent has no Rights or Legitimate Interests in Respect of the Domain Name
At first sight, this provision requires you to prove a negative. In fact, all you need to do is raise a presumption. You ought to be able to say that you have not licensed or authorized the Respondent to register the domain name. You may also be able to say that you have made reasonable enquiries to find out whether any of the circumstances set out in paragraph 4 (c) (i), (ii) and (iii) and you have found no evidence that they do. You may be able to add that you can think of no other circumstances that would amount to rights or legitimate interests in the domain name. If the Respondent has failed to respond to a request in a letter before complaint to explain why he or she claims a right or interest in the domain name you can annexe the letter. It is then up to the Respondent to rebut the presumption and if he or she doesn’t respond to the complaint, he or she will not be able to do so.
The Domain Name has been registered and is being used in Bad Faith
You have to prove both registration and use in bad faith. That may sound daunting but you are assisted by paragraph 4 (b) of the Policy which lists a number of circumstances that, if found to be present, shall constitute evidence of registration and use in bad faith:
“(i) circumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; orThose circumstances are not exhaustive. If you can point to other circumstances of the same nature you can rely on them too. Nowadays, it is rare for cybersquatters to do any of the acts listed in subparagraphs (i) to (iii). They are much more likely to use the disputed domain name as a URL (uniform resource locator) for a holding page with sponsored links and searches.
(ii) you have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.”
If a Respondent does that you can nail him (or her). Sponsored links and searches generate revenues every time they are clicked. If the domain name is the same or confusingly similar to the Complainant’s mark you have proved “a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site”.
If you or your legal advisers want help with the complaint form I would be glad to assist you. My clerk usually charges between £750 and £1,250 or the equivalent in dollars or euros for such work which is chicken feed compared to the value of the time of a busy business executive or legal or IP professional on a learning curve. Having decided 61 domain name disputes as well as advising on several more as counsel and having attended every domain name panellists meeting at the WIPO since 2005 I can fairly claim to have learned a thing or two about domain name disputes in that time.
Filing the Complaint
Once you are happy with the complaint you send it off to the dispute resolution service provider with a copy to the registrar and pay the service provider’s fee. The service provider will read it carefully to make sure that it is in order. If satisfied that it is, the service provider will serve the complaint on the Respondent. If not, it may ask you to amend your complaint.
Waiting for a Decision
The Respondent has up to 20 days to respond to the complaint. Once it has done so or the time for responding has expired the service provider will appoint an Administrative Panel who will decide the case on the complaint and any response that may have been received. Unless the Panel asks for further evidence or argument, which may happen if the Panel believes that the application was made in bad faith, he or she will deliver his or her decision to the service provider in draft within 14 days of appointment. The service provider will then proof and, if necessary, correct the draft and return it to the Panel for signature. The signed draft is then distributed to the parties.
After the Decision
Unlike Nominet’s Dispute Resolution Policy, the UDRP makes no provision for appeal. If the Panel has ordered a transfer or cancellation of the domain name, the registrar has to wait 10 days before acting on the order to allow a court to intervene. In view of the decisions in Patel v Allos Therapeutics Inc [2008] E.T.M.R. 75. Toth v Emirates [2012] EWHC 517, [2012] F.S.R. 26, Yoyo.Email Ltd v Royal Bank of Scotland Group plc [2015] EWHC 3509, [2016] F.S.R and Ross v Playboy Enterprises International, Inc [2016] EWHC 1379 (IPEC) (13 June 2016) it is most unlikely that an English court would do so. In the absence of such an intervention, the registrar carries the order into effect.
Further Reading
If you or your legal advisers want help with the complaint form I would be glad to assist you. My clerk usually charges between £750 and £1,250 or the equivalent in dollars or euros for such work which is chicken feed compared to the value of the time of a busy business executive or legal or IP professional on a learning curve. Having decided 61 domain name disputes as well as advising on several more as counsel and having attended every domain name panellists meeting at the WIPO since 2005 I can fairly claim to have learned a thing or two about domain name disputes in that time.
Filing the Complaint
Once you are happy with the complaint you send it off to the dispute resolution service provider with a copy to the registrar and pay the service provider’s fee. The service provider will read it carefully to make sure that it is in order. If satisfied that it is, the service provider will serve the complaint on the Respondent. If not, it may ask you to amend your complaint.
Waiting for a Decision
The Respondent has up to 20 days to respond to the complaint. Once it has done so or the time for responding has expired the service provider will appoint an Administrative Panel who will decide the case on the complaint and any response that may have been received. Unless the Panel asks for further evidence or argument, which may happen if the Panel believes that the application was made in bad faith, he or she will deliver his or her decision to the service provider in draft within 14 days of appointment. The service provider will then proof and, if necessary, correct the draft and return it to the Panel for signature. The signed draft is then distributed to the parties.
After the Decision
Unlike Nominet’s Dispute Resolution Policy, the UDRP makes no provision for appeal. If the Panel has ordered a transfer or cancellation of the domain name, the registrar has to wait 10 days before acting on the order to allow a court to intervene. In view of the decisions in Patel v Allos Therapeutics Inc [2008] E.T.M.R. 75. Toth v Emirates [2012] EWHC 517, [2012] F.S.R. 26, Yoyo.Email Ltd v Royal Bank of Scotland Group plc [2015] EWHC 3509, [2016] F.S.R and Ross v Playboy Enterprises International, Inc [2016] EWHC 1379 (IPEC) (13 June 2016) it is most unlikely that an English court would do so. In the absence of such an intervention, the registrar carries the order into effect.
Further Reading
Date
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Author
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Title
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17.10.2017
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Jane Lambert
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15.07.2017
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15.07.2017
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Jane Lambert
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Contact
Jane Lambert +44 (0)20 7404 5252
