The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of disputes regarding the registration of internet domain names. The UDRP currently applies to all generic top level domains (.com, .net, .org, etc.), some country code top-level domains, and to all new generic top-level domains (.xyz, .online, .top, etc.).
Historical background
When ICANN was first set up, one of the core tasks assigned to it was "The Trademark Dilemma", the use of trade marks as domain names without the trademark owner's consent. By the late 1990s, such use was identified as problematic and likely to lead to consumers being misled. In the United Kingdom, the
Court of Appeal
A court of appeals, also called a court of appeal, appellate court, appeal court, court of second instance or second instance court, is any court of law that is empowered to hear an appeal of a trial court or other lower tribunal. In much of t ...
described such domain names as "an instrument of fraud".
One of the first steps was that Member States commissioned the United Nations
World Intellectual Property Organization
The World Intellectual Property Organization (WIPO; french: link=no, Organisation mondiale de la propriété intellectuelle (OMPI)) is one of the list of specialized agencies of the United Nations, 15 specialized agencies of the United Nation ...
(WIPO) to produce a report on the tension between
trademark
A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others ...
s and
domain name
A domain name is a string that identifies a realm of administrative autonomy, authority or control within the Internet. Domain names are often used to identify services provided through the Internet, such as websites, email services and more. As ...
s. Published on 30 April 1999, the WIPO Report recommended the establishment of a "mandatory administrative procedure concerning abusive registrations", which would allow for a "neutral venue in the context of disputes that are often international in nature." The procedure was not intended to deal with cases with competing rights, nor would it exclude the jurisdiction of the courts. It would, however, be mandatory in the sense that "each domain name application would, in the domain name agreement, be required to submit to the procedure if a claim was initiated against it by a third party. The WIPO Report also set out the current
three-stage test of the UDRP.
At its meetings on August 25 and 26, 1999 in Santiago, Chile, the ICANN Board of Directors adopted the UDRP Policy,
based on the recommendations contained in the Report of the WIPO Internet Domain Name Process, as well as comments submitted by registrars and other interested parties.
On October 24, 1999, the ICANN Board adopted a set of Rules for Uniform Domain Name Dispute Resolution Policy (the UDRP Rules) setting out the procedures and other requirements for each stage of the dispute resolution administrative procedure. The procedure is administered by dispute resolution service providers accredited by ICANN.
Following adoption by ICANN, the UDRP was launched on 1 December 1999, and the first case determined under it by WIPO was ''World Wrestling Federation Entertainment, Inc v. Michael Bosman'', involving the domain name worldwrestlingfederation.com. Since then WIPO provides a globally-used Jurisprudential Overview to summarize case law on a range of common and important substantive and procedural issues under the UDRP.
How is the policy made mandatory
The policy has been adopted by all ICANN-accredited
registrars. It has also been adopted by certain managers of
country-code top-level domains (e.g., .nu, .tv, .ws).
The policy is then applicable due to the contract between the registrar (or other registration authority in the case of a country-code top-level domain) and its customer (the domain-name holder or registrant). When a registrant chooses a domain name, the registrant must "represent and warrant", among other things, that registering the domain name "will not infringe upon or otherwise violate the rights of any third party", and agree to participate in an
arbitration
Arbitration is a form of alternative dispute resolution (ADR) that resolves disputes outside the judiciary courts. The dispute will be decided by one or more persons (the 'arbitrators', 'arbiters' or 'arbitral tribunal'), which renders the ' ...
-like proceeding should any third party assert such a claim.
The policy itself sets forth the terms and conditions in connection with a dispute between the registrant and any party (other than the registrar) over the registration and use of the Internet domain name registered by the registrant.
In case of a dispute, the complainant shall select one of the administrative-dispute-resolution service providers from among those approved by ICANN by submitting the complaint to that Provider. The selected Provider will administer the proceeding. Proceedings under this Policy will be conducted according to the Rules for Uniform Domain Name Dispute Resolution Policy, as well as the selected administrative-dispute-resolution service provider's supplemental rules.
Providers of the UDRP are:
* The Arab Center for Dispute Resolution (ACDR)
* The Asian Domain Name Dispute Resolution Centre (ADNDRC)
* Canadian International Internet Dispute Resolution Centre (CIIDRC)
* Czech Arbitration Court, Arbitration Center for Internet Disputes
*
National Arbitration Forum
Forum, formerly known as the National Arbitration Forum (NAF) is an American organization that provides arbitration and mediation services to businesses, based at its Minneapolis headquarters and offices in New Jersey. The organization was founde ...
(NAF)
*
World Intellectual Property Organization
The World Intellectual Property Organization (WIPO; french: link=no, Organisation mondiale de la propriété intellectuelle (OMPI)) is one of the list of specialized agencies of the United Nations, 15 specialized agencies of the United Nation ...
(WIPO)
Process
A complainant in a UDRP proceeding must establish three elements to succeed:
* The domain name is identical or confusingly similar to a
trademark
A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others ...
or
service mark
A service mark or servicemark is a trademark used in the United States and several other countries to identify a service rather than a product.
When a service mark is federally registered, the standard registration symbol ® or "Reg U.S. ...
in which the complainant has rights;
* The registrant does not have any rights or legitimate interests in the domain name; and
* The domain name has been registered and the domain name is being used in "
bad faith
Bad faith (Latin: ''mala fides'') is a sustained form of deception which consists of entertaining or pretending to entertain one set of feelings while acting as if influenced by another."of two hearts ... a sustained form of deception whic ...
".
In a UDRP proceeding, a panel will consider several non-exclusive factors to assess bad faith, such as:
* Whether the registrant registered 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;
* Whether the registrant registered the domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, if the domain name owner has engaged in a pattern of such conduct; and
* Whether the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
* Whether by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, internet users to the registrant's website, by creating a likelihood of confusion with the complainant's mark.
The goal of the UDRP is to create a streamlined process for resolving such disputes. It was envisioned that this process would be quicker and less expensive than a standard legal challenge in a national or foreign court. In addition, the procedures are more informal than litigation and the decision-makers are experts in such areas as international trademark law, domain name issues, electronic commerce, the Internet and dispute resolution. It is also international in scope: it provides a single mechanism for resolving a domain name dispute regardless of where the registrar or the domain name holder or the complainant are located.
In order to file a UDRP complaint with a UDRP provider, the costs often start around
US$
The United States dollar (symbol: $; code: USD; also abbreviated US$ or U.S. Dollar, to distinguish it from other dollar-denominated currencies; referred to as the dollar, U.S. dollar, American dollar, or colloquially buck) is the official ...
1,000 to $2,000. The costs of the case will depend on the number of domain names involved and whether the case is decided by a single or by 3 panelists. For example, a case handled by the WIPO Arbitration and Mediation Center, involving between 6 to 10 domain names and decided by 3 panelists would cost
US$
The United States dollar (symbol: $; code: USD; also abbreviated US$ or U.S. Dollar, to distinguish it from other dollar-denominated currencies; referred to as the dollar, U.S. dollar, American dollar, or colloquially buck) is the official ...
5,000. Those fees do not include any payment that might have to be made to a lawyer representing a party in the administrative proceeding. Fees are available in Providers supplemental rules. In order to assist parties in filing their pleadings, WIPO provides a guide of case law called the WIPO Overview; this resource summarizes almost 1,000 UDRP decisions from hundreds of expert panelists.
If a party loses a UDRP proceeding, in many jurisdictions they may still bring a lawsuit against the domain name registrant under local law. For example, the administrative panel's UDRP decision can be challenged and in effect “overturned” in a U.S. court of law by means of e.g. the
Anticybersquatting Consumer Protection Act The Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d),(passed as part of ) is a U.S. law enacted in 1999 that established a cause of action for registering, trafficking in, or using a domain name confusingly similar to, or di ...
. If a domain name registrant loses a UDRP proceeding, they can file a lawsuit against the trademark holder within ten business days to prevent a registrar from transferring the domain name in the relevant jurisdiction (either the location of the registrar’s principal office or the registrant’s location).
Examples
The UDRP process has already been used in a number of well-known cases.
For example, in the ''Madonna Ciccone, p/k/a Madonna v. Dan Parisi and « Madonna.com »'' case, the panel found against the defendant registrant based on all three of the above factors and ordered the domain name turned over to
Madonna
Madonna Louise Ciccone (; ; born August 16, 1958) is an American singer-songwriter and actress. Widely dubbed the " Queen of Pop", Madonna has been noted for her continual reinvention and versatility in music production, songwriting, a ...
.
In the ''Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale'' case, the decision describes the practice of
cybersquatting
Cybersquatting (also known as domain squatting) is the practice of registering, trafficking in, or using an Internet domain name, with a bad faith intent to profit from the goodwill of a trademark belonging to someone else.
The term is derived f ...
. The UDRP was adopted to prevent such behavior where a domain name registrant tries to extort money from trademark owners. In this case, the expert found that the evidence showed the registrant was not using the domain name “wal-martsucks.com” for a criticism site but instead try to get a payout from
Walmart
Walmart Inc. (; formerly Wal-Mart Stores, Inc.) is an American multinational retail corporation that operates a chain of hypermarkets (also called supercenters), discount department stores, and grocery stores from the United States, headquarter ...
.
The ''Oki Data Americas, Inc. v. ASD, Inc.'' case is one of the most cited "
fair use
Fair use is a doctrine in United States law that permits limited use of copyrighted material without having to first acquire permission from the copyright holder. Fair use is one of the limitations to copyright intended to balance the interests ...
" decisions under the UDRP, it raises the question of whether an authorized (and non-authorized) sales or service agent of trademarked goods can use the trademark in a domain name.
''The Commissioners for HM Revenue and Customs v. Adil Khasanov'' case provides an example of the impact of the
Covid-19
Coronavirus disease 2019 (COVID-19) is a contagious disease caused by a virus, the severe acute respiratory syndrome coronavirus 2 (SARS-CoV-2). The first known case was COVID-19 pandemic in Hubei, identified in Wuhan, China, in December ...
crisis in the
Domain Name System
The Domain Name System (DNS) is a hierarchical and distributed naming system for computers, services, and other resources in the Internet or other Internet Protocol (IP) networks. It associates various information with domain names assigned to ...
, and the increasing number of fraudulent domain name registrations.
Often there is contention over similar but not identical domain names, in which the offended party files a court action claiming
trademark
A trademark (also written trade mark or trade-mark) is a type of intellectual property consisting of a recognizable sign, design, or expression that identifies products or services from a particular source and distinguishes them from others ...
or
copyright infringement
Copyright infringement (at times referred to as piracy) is the use of works protected by copyright without permission for a usage where such permission is required, thereby infringing certain exclusive rights granted to the copyright holder, s ...
. For example, actor
Robert De Niro
Robert Anthony De Niro Jr. ( , ; born August 17, 1943) is an American actor. Known for his collaborations with Martin Scorsese, he is considered to be one of the best actors of his generation. De Niro is the recipient of various accolades ...
has claimed ownership of all domain names incorporating the text "
Tribeca
Tribeca (), originally written as TriBeCa, is a neighborhood in Lower Manhattan in New York City. Its name is a syllabic abbreviation of "Triangle Below Canal Street". The "triangle" (more accurately a quadrilateral) is bounded by Canal Stre ...
" for domain names with any content related to film festivals. In particular, he has a dispute with the owner of the website
http://tribeca.net.
Domain name disputes under new generic top-level domains
In 2012, ICANN launched a process to create
new generic top-level domains (gTLDs). Over 1,900 applications were made. As part of the expansion of the domain name system, ICANN introduced a number of new brand protection mechanisms. Opinions differ as to whether or not these new processes will be effective. Industry commentators predict that the UDRP will continue to be used, and that there will be a "substantial increase in
cybersquatting
Cybersquatting (also known as domain squatting) is the practice of registering, trafficking in, or using an Internet domain name, with a bad faith intent to profit from the goodwill of a trademark belonging to someone else.
The term is derived f ...
". Evidence from previous expansions of the namespace, however, indicates the continued dominance of .com both in size and as the first-choice domain for cybersquatting (based on number of disputes).
The WIPO Arbitration and Mediation Center was appointed by ICANN as the exclusive provider of dispute resolution services for trademark based "pre-delegation" Legal Rights Objections (LRO) under ICANN New gTLD Program. The WIPO Center 2013 Report provides a resume and analysis in relation to the Legal Rights Objection (LRO) procedure where trademark owners could object to a new gTLD application they worried might infringe their rights.
See also
*
Cybersquatting
Cybersquatting (also known as domain squatting) is the practice of registering, trafficking in, or using an Internet domain name, with a bad faith intent to profit from the goodwill of a trademark belonging to someone else.
The term is derived f ...
*
DNS
The Domain Name System (DNS) is a hierarchical and distributed naming system for computers, services, and other resources in the Internet or other Internet Protocol (IP) networks. It associates various information with domain names assigned to ...
*
Top-level domain
A top-level domain (TLD) is one of the domains at the highest level in the hierarchical Domain Name System of the Internet after the root domain. The top-level domain names are installed in the root zone of the name space. For all domains in ...
*
Typosquatting
Typosquatting, also called URL hijacking, a sting site, or a fake URL, is a form of cybersquatting, and possibly brandjacking which relies on mistakes such as typos made by Internet users when inputting a website address into a web browser. Shoul ...
*
Reverse domain hijacking Reverse domain name hijacking (also known as reverse cybersquatting or commonly abbreviated as 'RDNH'), occurs where a rightful trademark owner attempts to secure a domain name by making cybersquatting claims against a domain name’s "cybersquatter ...
*
URL
A Uniform Resource Locator (URL), colloquially termed as a web address, is a reference to a web resource that specifies its location on a computer network and a mechanism for retrieving it. A URL is a specific type of Uniform Resource Identifie ...
References
External links
ICANN Uniform Domain-Name Dispute-Resolution PolicyCases decided through CIIDRCInternet Library of Law and Court DecisionsAnalysis of over 80 Court Decisions and UDRP Proceedings Resolving Domain Name Disputes
Uniform Domain Name Resolution Policy decisions EUDRPCases decided through WIPO (searchable)Cases decided through National Arbitration Forum (searchable)Full text search tool for UDRP decisions
{{Domain parking
Internet governance
Domain Name System
Arbitration