What can you do when you discover another company using a domain name either identical or similar to yours or to your trade mark?
For over 20 years, WIPO (the World Intellectual Property Office) has offered a resolution service for generic top-level domain disputes by way of the Uniform Domain Name Dispute Resolution Policy (UDRP).
Who can use the UDRP, when, and are there any benefits?
The UDRP can be used in for a number of generic top-level domains including ".com", ".info", ".net" and ".org" but it does not apply to national domains such as ".co.uk" (there are alternative options for these). It offers an alternative to litigating through the Courts although it does not prevent you from making an application to the Court regarding the same dispute if appropriate.
Who can use the UDRP?
The UDRP procedure can be commenced by any person or company in the world.
Grounds for bringing an action using the UDRP
The UDRP can only be used where there is a dispute regarding the alleged abusive registration of a domain name. That is to say that:
- "the domain name registered by the domain name registrant is identical or confusingly similar to a trade mark or service mark in which the complainant has rights
- the domain name registrant has no rights or legitimate interests in respect of the domain name in question
- the domain name has been registered and is being used in bad faith."
You need to be able to adduce evidence of the domain name's registration and use in bad faith. Examples of bad faith cited in the UDPR policy document of include registration for the purpose of selling the domain name to the complainant, prevention of use in relation to a trade/service mark, and intentional disruption of a competitor's business. The circumstances highlighted are not exhaustive and bad faith may be demonstrated in other ways depending on the particular facts.
The UDRP Administrative Procedure
The UDRP Administrative Procedure is usually completed within 60 days of the date WIPO receives the complaint.
The fees for submitting a complaint using this procedure are often much lower than equivalent Court proceedings, starting from US $1,500 (approximately £1,100) for a case involving up to five domain names and to be determined by a single panellist.
The basic stages in the procedure are:
- file the complaint
- the other party is given the opportunity to file a response to the complaint
- an Administrative Panel of one or three persons is appointed to decide the dispute
- the parties are notified of the panel's decision
- implementation of the decision (where, for example, domain names, are to be cancelled or transferred).
The UDRP Dispute Resolution Services offers a much quicker, and cost effective, route to resolving an issue involving a domain name. It is far less demanding on management time, and time away from the business, than if it were being litigated through the Courts.
So where it is an appropriate action it offers complainants an effective forum, especially if you are a small to medium sized business. The remedies available are similar as those through the Courts in England and Wales but at a fraction of the time and expense.
Whilst the service is designed to be user friendly, there are model answers and filing guidelines to consider which can be quite technical if this is not your particular area of expertise. Should you need any help in preparing such a complaint, or need some advice on this topic, please get in touch with Maria Peyman on 01223 326596 or maria-peyman@birketts.co.uk, or another member of our Intellectual Property Team who will be able to assist.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
