If someone is using a website domain name that contains the name of your business or your trademark, you may be able to obtain the domain, or have it shut down, for relatively little cost and in less than two months. While litigation can be costly and potentially take years, ousting cyber squatters can be cheaper and easier with the use of a special process specifically created to resolve domain name disputes: the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP was established by the Internet Corporation for Assigned Names and Numbers (ICANN) and is designed to provide an efficient and cost-effective means for resolving domain name disputes.
The UDRP provides for resolution of domain name disputes through mandatory administrative proceedings. All those who register domain names — including .com, .net and .org — must agree to abide by the UDRP, which permits the owner of a trademark to initiate an administrative complaint against an alleged cybersquatter.
For example, the NCAA has actively used the UDRP to obtain several web addresses. According to the NCAA’s general counsel, many parties transfer contested domain names rather than engaging in dispute resolution procedures pursuant to the UDRP. Among the domain names which the NCAA has been able to acquire from other parties are www.wwwmarchmadness.com, www.finalfour2001.org and www.marchmadness2001.net.
At BoyarMiller, we have successfully used the ICANN process to achieve quick and cost effective resolutions for our clients. In one such case our client was able obtain domain names his former employer registered in bad faith. When the client resigned and started his own business, the former employer quickly registered eight domain names containing the name of the client’s new company. Within 60 days of filing a UDRP complaint, all eight domain names were transferred to our client by the former employer.
The complaint is decided by a panel of one or three decision-makers who render a written, published decision as to the registration of the disputed domain name. The total cost for a complaint involving one to two domain names with the National Arbitration Forum (one of the approved ICAAN Dispute Resolution Service Providers) is only $1,300 for a single-member panel or $2,600 for a three-member panel. Plus, the average time from filing to decision is only 52 days.
For a complainant to prevail in the UDRP proceedings, it must prove that:
- the registrant's domain name is identical or confusingly similar to its trademark,
- the registrant has no rights or legitimate interests in the domain name, and
- the registrant has registered the domain name in bad faith.
If the complainant establishes these elements, the panel that arbitrates the UDRP proceedings has the authority to cancel or transfer the registrant's domain name.
Under the UDRP, the domain name registrant maintains the domain name's status quo during the course of a dispute resolution proceeding. However, the registrant is prohibited from selling or otherwise transferring the domain name while a proceeding is in progress. If a UDRP panel decides that a domain name should be cancelled or transferred, the defendant is required to wait 10 business days before implementing the decision. At the end of the 10-day period, the decision will be implemented unless the registrant has commenced a lawsuit against the complainant in a qualified jurisdiction.
So, if someone has registered web domains containing your trademark or company name, before engaging in costly litigation, it is prudent to consider the UDRP process as a means of resolution.