The UDRP (or Uniform Domain Name Dispute Resolution Policy) is a little known piece of ‘law’ that every domain name holder (and prospective domain name holder) should know about. Not knowing about it could have serious consequences if a trademark owner challenges your domain name. This is more common than you think.
Basically, the UDRP is a mechanism whereby trademark owners can claim back domain names from people who have deliberately or unwittingly registered a domain name containing a trademark. The process is frighteningly fast, decisive, and most people don’t have the faintest idea of its existence.
The UDRP is not strictly speaking law, but nonetheless it legally governs all domain name registrations, as you specifically agree to be bound by it when you buy a domain name from any legitimate domain name registrar (eg GoDaddy, RegisterFly, Moniker etc). Your agreement to be bound by the UDRP is typically buried away in one of those terms and conditions pages that you check off without thinking when you go to register a domain.
Our company has just been embroiled in a complex UDRP action and the experience is a warning and lesson to anyone involved in registering domain names.
It turns out that if you register a domain name that contains as part of the domain name a trademarked word, the trademark owner has virtually defacto rights to take back the domain name from you using the UDRP, no matter how much work you have put into building your website, and no matter how successful or popular the site has become.
It costs only $1300 to file a UDRP action by a trademark owner, regardless of the number of domain names at issue, and UDRP decisions are overwhelmingly weighed in favour of the trademark owners. The vast majority of cases are won by the trademark owner, and indeed many people are so overwhelmed when they receive notification of an action, that they don’t even bother to defend themselves, which is almost always a mistake.
I won’t go into chapter and verse on the mechanics of the UDRP, but basically it works as follows…
- A trademark owner discovers that someone has registered a domain name that contains, or is very similar to, a trademark that they own – eg wefixdell.com, or gooogle.com or hampsteadflowers.com. (Trademarks cover much more than just well known international companies)
- The trademark owner files a complaint with one of the four independent UDRP mediation organisations, two of which are most common – WIPO and the National Arbitration Forum. They pay $1500 in the case of WIPO and $1300 in the case of NAF to initiate and prosecute the action.
- The domain name holder gets an e-mail telling them that a UDRP action has been filed against them, and they have 20 days to file a response. The domain name is instantly locked at this stage by your registrar so you can’t do anything with it. It is typically locked before you are even notified of the action. (Note that this does not mean your site is not accessible, although in some very extreme cases this can happen if you are unlucky)
- Your response doesn’t have to be filed by a lawyer, the UDRP is designed to be accessible to people who wish to defend themselves. In this way it is similar to a small claims court proceeding.
- After the 20 days are up, both parties have the option to file an additional shorter response within 5 days. Once this time is up, a mediator (usually an experienced lawyer) makes a decision.
The mediator’s decision is final, and is typically given within 21 days. If the decision is to hand over the domain name to the trademark owner (which is usually the case), the trademark owner can get your domain name and all its traffic less than 2 weeks later, although the average is around 3-4 weeks. There is nothing you can do to stop the process, all the domain name registrars are parties to this and will make the transfer automatically whether you agree with it or not. The only option you have at your disposal if you lose a UDRP action is to launch your own separate legal action in a proper court of law immediately after the decision, but this option will usually only be available to those with deep pockets and resources.
For an eye opening read into the kind of cases that are dealt with by the UDRP, you can search through all the past cases at both the WIPO and NAF websites – Personally I find the NAF database to be the friendliest to use. You don’t actually need to enter any words or phrases into the search box, just hit ‘Search Cases’ and you’ll get all the cases that have ever gone to UDRP at the National Arbitration Forum.
What will surprise you is how many cases there are involving trademarks and companies you’ve never heard of. This is the worrying part for people considering registering a domain name, or holding a large collection of existing names.
I’m sure you’ll find your own interesting cases but this one and this one are pretty good. The latter is a particularly good example of how a trademark owner can claim back hundreds of domain names in a single action.
My advice to anyone involved (even casually) in registering domain names is the following…
- Check the free online US trademark database and the trademark database in your own country before registering a domain name
- Never offer to sell a domain name containing a trademark to the trademark owner (this makes it a slam dunk that the other party will win a UDRP action against you)
- Never allow yourself to get drawn in to offering a domain name to a trademark owner if they approach you to buy the name. Someone tried this on us recently.
- Do not register domain names containing trademarks except in extreme circumstances. The only viable reasons for using such a domain would be if you can show that you run an existing business with the same name, or if your site is strictly not-for-profit, or if you have had the domain name since before the trademark was filed. Some fan sites are occasionally allowed (but this is 50/50), and some free speech sites such as xyzcompanysucks.com are occasionally allowed (again it’s 50/50 here).
If you do get hit with a UDRP action, and you believe you have acted in good faith (i.e. you are not in business as a cybersquatter), the thing to do is to make sure you DO file a response, even if it’s your own words and you don’t wish to or can’t afford to hire a lawyer.
Here are some tips on preparing your own response to a UDRP action…
- Read the UDRP policy at least 3 times. It’s not that long. Make sure you understand it, or get a friend who’s smarter than you to help you.
- Read the UDRP Rules document
- Read the Supplemental Rules document for the particular mediation organization that is being used in your case. For example the WIPO Supplemental Rules and the NAF Supplemental Rules govern the procedural side of things – when you have to file a response by, how to do so, and so on
- Read as many past cases as you can (we read over 50) and try to find cases that are similar to yours
- Read this excellent but rather lengthy analysis of past UDRP decisions
- Begin writing your response paying particular attention to the 3 key areas listed in the UDRP policy
- Back up every single thing that you say with proof. You only have 10 pages to file your response, but you can have as many pages as you like of ‘exhibits’ (screenshots, printouts etc). In our case, we filed 90 pages of exhibits in our response, although this is probably extreme
- Use tools such as the Wayback machine to show what your site looked like in the past or tools such as Compete.com and Alexa to demonstrate the number of users you have
- Research the ‘Complainant’ (the person filing the action) thoroughly, their trademarks, their business, their domain names, and look for any areas you can seize upon. Research any prior UDRP cases they might have filed.
- Read the Complainant’s initial Complaint document over and over again. Understand the lingo, find mistakes, inaccuracies, and look for how they structure their Complaint. A common feature is for them to quote previous decisions. You should do the same.
- The National Arbitration Forum provides a model Response form in Word format which you can use to structure your response. You should use it.
- Focus on the 3 main categories of defence as provided by the UDRP, and always be thinking of how your arguments relate to these 3 particular categories
- Make use of the option to file an additional response. It doesn’t cost you anything other than your time, and it means you get to have the last word.
- Finally, don’t leave your response to the last minute. Start work on your response immediately you receive notification of an action. It will take you 20 days to research, learn everything about the UDRP and to prepare a full and detailed response.
If you do all this, you stand a far better chance of holding on to your domain name and website.
In our case, we defended ourselves without lawyers as a matter of principle, and I’m delighted to say we won our UDRP decision. It was around 100 hours of work, but worth it.
Good luck in your case, and if you have any comments or have found this article useful, please share them with other readers through the comments feature below.
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