Do you own a startup or a company operating on a domain name that is not commercially viable? Or the domain name for your website is not an exact match of your company name? Then, in order to get that desired domain name which may be available for sale or own by an already existing business – are you thinking of filing UDRP? Wait a minute! UDRP which stands for Uniform Domain Name Dispute Resolution Policy is not an easy route to transfer someone else’s domain name into your own domain registrar account. So.
Before filing UDRP – These Three Elements Matter
- The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
- The registrant does not have any rights or legitimate interests in the domain name; and
- The domain name has been registered and the domain name is being used in “bad faith“.
Though it looks simple – but in reality, it is not. Even though, you may be taking the advice and help of your Attorney – It’s perhaps advisable that you do your own home-work as an entrepreneur first. And, based on your research and understanding decide whether filing UDRP to win the domain name will be a good fit or it’s going to be an exercise in futility. The domain industry is still looked upon as ‘new’ and not everyone understands how it works. And, it is important that a thorough understanding be made in advance for the subject domain name. Below are some of my thoughts for someone with UDRP in mind for a domain name.
Here are some tips when it comes to filing UDRP:
Contact Attorney Specialized in Domain Names: You should seek the help of an attorney or lawyer who has a good understanding of domain names. Also, he should be having a proven track record of being an attorney with experience of representing the complainant as well as the respondent for a disputed domain name. A Domain Name Attorney may recommend some other course of action if he thinks the above three elements are difficult to met.
RDNH: Paragraph 15(e) of the UDRP Rules defines reverse domain name hijacking as the filing of a complaint in bad faith, resulting in the abuse of the UDRP administrative process. As per Wikipedia “Reverse domain name hijacking (also known as reverse cybersquatting or commonly abbreviated as ‘RDNH’), occurs where a rightful trademark owner attempts to secure a domain name by making cybersquatting claims against a domain name’s “cybersquatter” owner. This often intimidates domain name owners into transferring ownership of their domain names to trademark owners to avoid legal action, particularly when the domain names belong to smaller organizations or individuals. Reverse domain name hijacking is most commonly enacted by larger corporations and famous individuals, in defense of their rightful trademark or to prevent libel or slander.”
Domain Industry: Nowadays the domain industry is much more active and covers wide topics related to domain name disputes. Blogs like domaininvesting.com, thedomains.com actively monitors UDRP cases. Domain investors like any other businessman or owner often put their best efforts to protect their domain names from legal proceedings. And, most of the investors take great care in maintaining a clean portfolio. So, it’s important to familiarize yourself with some domain related content.
Cost of UDRP: Charges for UDRP filing as stated by WIPO is for a case filed with the WIPO Center involving between 1 and 5 domain names that is to be decided by a single Panelist, the fee is USD1500. For a case that is to be decided by 3 Panelists, the fee is USD4000. Also, you must take into consideration your own attorney fees that can add up to the total cost substantially. And, there could be an unknown cost factor such as the stress that comes with a court-battle. So, you need to review such costs in detail.
Search WIPO Cases and WIPO Panel Decisions: How a UDRP panel thinks? This is an excellent link to study some past decisions concerning disputed domain names. Here you have the option to Search WIPO cases by Domain Name, Search WIPO cases by named complainant, Search WIPO cases by named respondent. Link
Case Duration: Time is an important tool for each one of us. We want our time to be productive and resourceful. Filing UDRP is a time-consuming process. A typical UDRP case results in a decision in about two months, but it may get extended depending on the nature and facts related to the case. Also, it must be noted that the respondent can file a lawsuit to prevent the transfer if he/she loses the UDRP.
Who Owns It: There are various uses of a particular domain name. And, it’s important to study who owns the domain name you want for your company. And, for how long it’s registered. Is your trademark comes first or the registration date comes first. Is the domain owner/registrant using for his own personal or business purpose or it’s used to display ads. And, if ads are displayed – are they relevant to your entity or not. All details are important.
So, if you are an entrepreneur and are looking to win a domain name through UDRP, you should make yourselves aware of all the points above. Checking with your own law firm as well as consulting an attorney specialized in domain name disputes will help you to cross-verify the claims made by your own law-firm. Remember that even big corporations have lost UDRP cases. It makes sense to really study the relevant domain name for which you are planning to file UDRP so that you can reach a fair conclusion in advance.
Disclaimer: This article is written for entrepreneurs for information purposes only, and should not be construed as professional advice. Always consult your attorney for legal matters.