Posted By
Cooley GO

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”).

Procedure: URS UDRP
Applies to: The URS only applies to new 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 Domain name is transferred to the Complainant or cancelled, at the Complainant’s option
Filing Fees: NAF
Complaint: From $375(single Panelist for up to 14 domain names)Response: From $400(single Panelist for more than 15 domain names)
WIPO

From $1,500

(single Panelist for up to 5 domain names)

NAF

From $1,300

(single Panelist for up to 2 domain names)

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.

(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: 500 words WIPO: 5,000 words

NAF:   15 pages

Length of Reply: 2,500 words WIPO: 5,000 words

NAF:   15 pages

Speed: 5 days after Response is filed Within 14 days of Panel appointment
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

URS Rules

 

NAF Supplemental Rules (including fees)

UDRP Policy

Rules for UDRP

 

WIPO Supplemental Rules for UDRP

WIPO Fees

 

NAF Supplemental Rules for UDRP (including fees)

Providers’ websites: Asian Domain Name Dispute Resolution Centre

National Arbitration Forum

Arab Center for Domain Name Dispute Resolution

Asian Domain Name Dispute Resolution Centre

Czech Arbitration Court Arbitration Centre for Internet Disputes

National Arbitration Forum

World Intellectual Property Organization

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.