A UDRP complaint is a way to obtain a domain name that was registered in bad faith by someone else. A complainant should make sure that it is bringing its complaint in good faith, otherwise, a UDRP panel may label it as a reverse domain name hijacker. Moreover, a complainant could be hit with a $100,000 claim in a US District Court, for each domain name that it was trying to hijack, under the Lanham Act.
A UDRP complaint should fully state a complainant’s case.
To succeed, the Complainant must demonstrate that all of the elements enumerated in paragraph 4(a) of the Policy have been satisfied:
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and
(iii) the disputed domain name has been registered and is being used in bad faith.
Trademark lawyers file UDRP complaints with one of the following approved dispute resolution service providers:
- WIPO based in Geneva, Switzerland
- ADR Forum based in Minneapolis, MN, USA
- ADR.EU based in Prague, Czech Republic
- Asian Domain Name Dispute Resolution Centre, with offices in Kuala Lampoor, Seoul, Beijing, and Hong Kong
- Arab Center for Domain Name Dispute Resolution, based in Amman Jordan.
The panelists with the ADR Forum are more likely to consistently apply US law when deciding a UDRP Complaint. The decisions of WIPO panelists are often inconsistent.
Evidence showing the extent to which a complainant’s trademark is well-known
Whether or not a complainant is a trademark holder, a complainant should present evidence showing the extent of the renown of the mark on the Internet. Bald assertions that the trademark is well known are not enough.
Pleading Bad Faith on the part of the Domain Name Registrant
Paragraph 4(b) of the Policy provides four, non-exclusive, circumstances that, if found by the Panel to be present, shall be evidence of the registration and use of a domain name 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; or
(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 online 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”.
Edge cases where a UDRP Panel found no bad faith use of domain name:
Develi.com WIPO UDRP Case No. D2014-1367
- A website featuring pay-per-click advertising of a general nature.
- Web pages concerned offered the disputed domain name for general sale.
The broad thrust of the Complainant’s case is that this demonstrates registration and use in bad faith. The Panel does not agree. There is no evidence before the Panel that the Respondent was intent on targeting the Complainant’s trademark by way of its registration of the disputed domain name. On the contrary, it seems plausible to the Panel that the Respondent selected the disputed domain name because it represented the name of a geographic location, the city named Develi.
Databases of UDRP Decisions
The following databases regularly catalog UDRP Decisions:
- WIPO Decisions by Year, also a robust search function WIPO Search Decisions.
- Forum (formerly National Arbitration Forum) Decisions.
- eResolution Decisions.
- Arbitration Center for “.eu” Decisions–ADReu.
- ADNRC-Asian Domain Name Dispute Resolution Centre
- DNDisputes.com: it provides a statistical breakdown of information
- RDNH.com: Reverse Domain Name Hijacking list of cases
Core Principles of Domain Name Law Created in UDRP Proceedings | IP Legal Corner
These points of authority do not necessarily reflect the views of the writer. This blog is not legal advice. These posts are just notes.