The Canadian International Internet Dispute Resolution Centre ("CIIDRC") opened for business last month and is currently accepting domain name complaints under the Uniform Domain-Name Dispute-Resolution Policy ("UDRP"). The CIIDRC joins the World Intellectual Property Office ("WIPO"), the National Arbitration Forum, the Asian Domain Name Dispute Resolution Centre, the Arbitration Center for Internet Disputes of the Czech Arbitration Court, and the Arab Center for Dispute Resolution (ACDR) as only the sixth approved UDRP service provider in the world. This article provides a brief summary of the process, costs and remedies available in a UDRP proceeding.
What is UDRP?
The UDRP was established by the Internet Corporation for Assigned Names and Numbers ("ICANN") to resolve disputes involving domain name registrations. The UDRP applies to a variety of generic top level domains (e.g. .com, .net, .org, .deal, .film, etc.) and some country code top-level domains (e.g. .co, .me, etc.) 1.
A UDRP proceeding is initiated when a Complainant submits a complaint (online) and associated filing fees to one of the six approved UDRP service providers mentioned above. The UDRP service provider reviews the complaint, notifies the respondent, provides the respondent with an opportunity to respond, and appoints a panel consisting of 1 or 3 members to consider the complaint. The panel member(s) decide the complaint and the registrar for the domain name implements the decision. In a typical case, the entire UDRP proceeding is decided and implemented in less than two months 2.
What does the Complainant need to Prove in a UDRP Proceeding?
To succeed in a UDRP proceeding, the complainant must prove that:
(i) the domain name in dispute is identical or confusingly similar to a trademark or service mark in which the complainant has rights prior to the date of the registration of the domain name and continues to have such rights;
(ii) the registrant has no rights or legitimate interest in respect of the domain name; and
(iii) the domain name was registered and is being used in bad faith (e.g. the domain name was registered primarily for the purpose of selling the domain name to the complainant or a competitor of the complainant or for disrupting the business of a competitor) 3.
What Remedies are Available in a UDRP Proceeding?
The remedies available in UDRP proceedings are limited to: (i) transfer of the domain name in dispute to the complainant; or (ii) cancellation of the domain name registration 4. Complainants should, accordingly, not expect to receive financial compensation (e.g. damages, etc.) or recover costs in UDRP proceedings.
What are the fees for initiating a UDRP Proceeding?
The fees of filing a UDRP proceeding can range from about US$1500 to more than US$5000 depending on the choice of a service provider, the number of domain names included in the complaint, and the number of panelists selected to hear the complaint. Most UDRP service providers charge the same fee to hear up to a certain number of domains, so it could be cost effective for complainants to challenge multiple domain names at the same time.
For example, the CIIDRC currently charges a US$425 filing fee + a US$1,050 hearing fee (US$1475 total) for proceeding involving a single-member panel and up to three disputed domain names 5.
The UDRP provides a timely and cost-effective process for resolving disputes over generic top level domain names and some country code top-level domain names. However, complainants should be aware that financial compensation is not available in UDRP proceedings.
3. See Paragraph 4(a) of Uniform Domain Name Dispute Resolution Policy: https://www.icann.org/resources/pages/policy-2012-02-25-en#4a
4. See Paragraph 4(i) of Uniform Domain Name Dispute Resolution Policy: https://www.icann.org/resources/pages/policy-2012-02-25-en#4i
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.