Domain Name Disputes - An Overview of WIPO UDRP
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29 September 2011
It has been reported this week that in 2010 trade mark owners filed
2,696 domain dispute cases. These relates to 4,370 domain names. It is
a 28% increase on the figures last year and it is thought to be down to
the ease of filing of disputes due to the new online system.
What is a Domain Dispute?
The Internet Corporation for Assigned
Names and Numbers (ICANN) Uniform Domain Name Dispute Resolution Policy
(UDRP) is administered by WIPO and was introduced in 1998. In 1999 WIPO
developed and implemented the UDRP in order to save costs and time in
international domain name disputes. T
he UDRP sets out certain circumstances in
which domain name disputes will be subject to mandatory administrative
proceedings. Unlike traditional arbitration UDRP has no binding effect
other than on the registrar of the domain name in question. The
decision essentially creates a contract between the parties which must
be adhered to to avoid a breach of that contract. ICANN’s policy and
procedures are incorporated into a subscribers internet registration
agreement this has the effect that by making a complaint to ICANN the
complainant automatically enters into arbitration proceedings.
As mentioned above, proceedings under UDRP
are carried out by four approved bodies: WIPO, NAF (National
Arbitration Forum), CPR (Institute for Resolution) and ADNDRC (Asian
Domain Name Dispute Resolution Centre). Various countries around the
world also use derivatives of the UDRP for their own domain name levels
for example Nominet in the UK.
Any person (or entity) may make a
complaint under UDRP to one of the above bodies and there is no
requirement for legal representation (lowering costs) and except in
special circumstances there is no physical hearing instead the process
is ‘paper-based’ this saves considerable time and expense and
bearing in mind the international context of the internet is the only
It is up to the complainant to
show the following:
A domain name is either identical or
confusingly similar to a trade mark this includes both registered and
unregistered ‘common law’ trade marks,
The holder of the domain name has no
rights or legitimate interest in the domain name.
The domain name has been registered and is
being used in bad faith (for example selling it for a price exceeding
the registration cost.
Upon the receipt of the complaint the
respondent has 20 days to issue their response dealing with the
allegations made against them. The panel will make a decision based
upon UDRP rules and any law deemed appropriate, if both parties are
based in the same country then this will be the rules and principles of
the national legal system, as such any court decisions of the relevant
country will have to be taken into account.
Lawdit Solicitors is a commercial
firm which specialises in IP law. firstname.lastname@example.org
About the Author
Lawdit Solicitors offer services and
advice for litigation, commercial contracts, Intellectual Property and IT legal
agreements. We are experts in commercial law with a heavy emphasis on
Intellectual Property, Internet and e-commerce law. Lawdit is a member of the
International Trademark Association, the Solicitors' Association of Higher Court
Advocates and we are the appointed Solicitors to the largest webdesign
association in the world, the United Kingdom Website Designers Association.
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Article Published/Sorted/Amended on Scopulus 2011-10-13 15:41:13 in Legal Articles