If you discover someone making impermissible use of your trade mark in a domain name, you may want to take action to regain control of your trade mark. The form of the action you take will depend on a number of factors, including the cost and speed of proceedings as well as, of course, your prospects of success.
The Uniform Rapid Suspension System and the Uniform Domain Name Dispute Resolution Policy offer two ways to swiftly resolve disputes at a fraction of the cost of litigation. The price for such increased speed and reduced cost is that their requirements are relatively stringent, and their procedures somewhat less flexible than litigation, but they are used by thousands of brand owners every year to quickly stamp out illegitimate uses of trade marks.
What follows is a summary of the key distinctions between the URS and the UDRP, including the criteria for filing a successful Complaint and the fees for doing so, at the two most popular providers: the World Intellectual Property Organisation (“WIPO”); and the National Arbitration Forum (“NAF”).
|Applies to:||The URS only applies to new (introduced after Jan. 1, 203) gTLDs (at present)||The UDRP applies to all gTLDs, including new gTLDs, and some ccTLDs|
|Remedies:||Domain name is suspended for the remainder of the term of registration (which is extendable for one year at the Complainant’s request)||Domain name is transferred to the Complainant or cancelled, at the Complainant’s option|
Complaint: From $375 – $500 (depending on number of domain names)
Response: From $400 (if more than 15 domain names) – refundable to the prevailing party
|WIPOFrom $1,500 (1-5 domains), $2,000 (6-10 domains) (single Panelist)
$4,000 (1-5 domains), $5,000 (6-10 domains) (three Panelists)
From $1,300 – $2,280 (depending on number of domains) (single Panelist)
$2,660 – $4,560 (depending on number of domains) (three-member panel)
|Panel:||Single examiner at first instance; single examiner or three member panel on appeal||Single expert or three member panel|
|Criteria:||(a) The registered domain name is identical or confusingly similar to a word mark:
(i) for which the Complainant holds a valid national or regional registration and that is in current use; or
(ii) that has been validated through court proceedings; or
(iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed; and
(b) The Registrant has no legitimate right or interest to the domain name; and
(c) The domain was registered and is being used in bad faith.
Note: Following the EU’s General Data Protection Regulation (GDPR), a complaint will no longer be incomplete if it does not contain the identity of the domain registrant.
|(i) The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) The registrant has no rights or legitimate interests in respect of the domain name; and
(iii) The domain name has been registered and is being used in bad faith.
|Length of Complaint:||Online form with required information, and which includes an optional 500 word free-form text box for additional information.||WIPO: 5,000 words
NAF: 15 pages
|Length of Response:||2,500 words, including attachments||WIPO: 5,000 words
NAF: 15 pages
|Speed:||5 days after Response is filed||Within 14 days of Panel appointment (which is 5 days after filing a Response)|
|Standard of proof:||“Clear and convincing”||“Balance of probabilities” or “preponderance of the evidence”|
|Appeals:||Losing parties can appeal an adverse decision within 14 days.
A losing Complainant can also commence a UDRP complaint or initiate court proceedings.
|UDRP proceedings cannot be appealed, but if a losing Respondent notifies ICANN within 10 days of a decision that it has commenced proceedings in a court of competent jurisdiction concerning the domain name, ICANN will stay the transfer or cancellation of the registration|
|Further Information:||URS Procedure||UDRP Policy|
|Providers’ websites:||Asian Domain Name Dispute Resolution Centre||Arab Center for Domain Name Dispute Resolution|
Choosing either the URS, the UDRP or an alternative course of action will depend on a number of factors that cannot be reduced to an entry in a table, so it is important that you consult a domain name specialist at the first sign of a dispute to maximise your chances of successfully protecting your brand. Please contact your local domain name expert if you would like to discuss any issues concerning domain name law and practice.