Your Options Court Alternative Legal Processes
Uniform Domain-Name Dispute Resolution Policy (UDRP)
Aside from being a real mouthful to say, the UDRP was adopted by ICANN on 26th August 1999 as a set of guidelines for resolving disputes around the registration of domain names.
The guidelines were designed “to protect recognized brands and trademarks from abusive registrations by third party registrants who intentionally register confusingly similar domain names in bad faith for profit.” (ICANN)
All UDRP filings have to be made with dispute resolution providers approved by ICANN; you can choose the most appropriate provider from the list below:
- Asian Domain Name Dispute Resolution Centre
- National Arbitration Forum
- Czech Arbitration Court
- WIPO Arbitration and Mediation Center
The UDRP guidelines state that in order to be valid and eligible, claimants must be able to establish evidence for their disputes to be supported on the following grounds:
- If the value of the trademark can be proven to be damaged or lessened as a result of another party using an identical or confusingly similar domain name
- If the registrant can’t prove any relevant interests relating to the domain name
- Also if the registrant uses the domain name in “bad faith”
Now what you might ask does that mean? Well, “bad faith” generally refers to three particular types of situation:
- A domain names is registered for the purpose of selling, renting or transferring registration to a trademark owner or their competitor for a disproportionate amount of money
- A domain name is registered by a company in order to damage the business of their competitor
- A domain name is used to intentionally confuse and attract consumers to a particular site for commercial gains
Uniform Rapid Suspension System (URS or URSS)
URS or the Uniform Rapid Suspension System was designed to provide trademark owners with a quick, simple and cost effective way of taking down websites that infringe their rights in relation to their trademark, such as registering similar or identical domain names. It was intended as a lighter, swifter alternative to the aforementioned UDRP.
The original proposal set the arbitration fee at $300-$500 putting URS within reach of even the smallest niche brands; however since putting the provision of the arbitration service out to tender ICANN has struggled to find any provider who can meet the levels of service detailed as essential to URS for the fees they’d like to charge. ICANN have set aside budget in 2013 to resolve this issue by redesigning the URSS.
Differences between URS and UDRP
The main difference between the URSS and the UDRP is that the URSS has stricter criteria and so not everyone is eligible to file for URS. One of the unique features of the URSS is that it will contain and uphold penalties for abusive filings, which could result in a ban on future URS filings. Another interesting feature is that if the decision of the URS goes against the domain name registrant they still have several appeal possibilities (from 30 days up to one year).
Additionally the UDRP allows for domain name transfer whereas with a URS the domain name is never transferred; it remains the property of the owner although they are not allowed to have any online presence using it for the entire duration of its registration.
As a trademark owner, you may wish to consider this in your decision as to whether to use the URS or the UDRP (which includes the provision of a transfer of the domain name to you as the prevailing party and therefore does not carry a monitoring burden with it).
The PDDRP is another administrative option for trademark owners to file an objection against a registry if its’ “affirmative conduct” in the use or operation of its gTLD is supposed to have caused or contributed to trademark abuse.
PDDRP was designed to perform as a higher-level enforcement tool to support ICANN compliance activities. It is used where rights holding trademark owners are not in a position to continue to pursue lower-level multijurisdictional enforcement options in a vastly expanded DNS.
PDDRP involves a number of complex procedural layers and as such may not be a viable option for businesses seeking swift action or a simple process. Also PDDRP doesn’t cover third-party-registered infringing second-level domain names and requires evidence of specific bad-faith conduct (profit from encouraging infringement in addition to “the typical registration fee”) so this process is not always suitable; be sure to check carefully that your situation matches these criteria before beginning PDDRP proceedings.
Choosing An Appropriate Dispute Resolution Process
- First evaluate your timeline, if you need to take action right away there’s no point in choosing the URS which isn’t ready yet
- Secondly, consider your budget, if cost is an issue you need to weigh up a cost/benefit analysis of a court based arbitration vs. an alternative administrative process
- Thirdly look at the options and features of each available option; do you need a right to appeal for instance? This will affect your choice.
- Lastly, if you are considering the URS route, you’ll need to check against the final version of this dispute model and check that you are eligible to enter this type of proceedings