Using UDRP to reclaim your domain from a cybersquatter.
Last week at a Painesville Chamber meeting I overheard another attendant complaining that someone had the .COM version of their company's name. The
cybersquatter wanted $10,000 for the domain, and the business owner wondered if there was a service to negotiate a fair price. I told him about the
UDRP and suggested that he might be able to get the domain turned over to him for much less. Here is a
much simplified overview of what is involved.
UDRP, What Is It?
UDRP stands for Uniform Domain-Name Dispute-Resolution Policy. ICANN (
Internet Corporation for Assigned Names and Numbers) started using it in 2000 as a method for handling domain registration disputes. Whenever anyone registers a domain (.com, .net. .info .biz, .name and a few others) they agree to be bound by certain rules including going through the URDP when there is a domain name registration dispute.
Who Can File a UDRP Complaint?
Anyone can file a UDRP complaint. Although, typically a lawyer or someone well versed in trademark law is hired to file a complaint. For a complaint to be filed you need to show the following:
- The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- The registrant does not have any rights or legitimate interests in the domain name; and
- The registrant registered the domain name and is using it in "bad faith."
That means that you need to have a trademark or a service mark for the domain in dispute. For example, if your company's trademarked name is "QWERTY Baseball Bats" and someone registered "QuertyBaseballBats.com" then you have met condition #1. But you can not file a complaint over someone who registered "baseballBats.com".
What is bad faith?
According to the the
UDRP policy (section 4.b) there are four ways to show bad faith.
- Circumstances indicating that someone has registered or has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name; or
- Someone has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that they have engaged in a pattern of such conduct; or
- Someone has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
- By using the domain name, someone has intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of their web site or location or of a product or service on their web site or location.
How to File a UDRP Complaint?
There are several
approved providers who handle disputes. You need to submit your complaint to one of those organizations and pay a non-refundable fee to get the process started. Complaints must be mailed to the organization; starting March 1, 2010 complaints can be filed electronically.
One of those providers, the National Arbitration Forum (NAF) has a
step by step guide for submitting a complaint with them, including a template of a complaint (in MS Word). Their fee is $1300 for a single domain complaint heard by a single arbitrator, for an additional fee there is an option for a three party panel to hear your complaint.
There are several law firms that specialize in UDRP complaints. They can help you file your complaint with one of the approved providers.
What Happens Next
After you file a complaint here is what happens.
- It is reviewed by the Provider and if needed you a have five days to correct any deficiencies they find.
- If it is reviewed and is formatted properly and complete, then it is sent to the Respondent within 3 days by the provider.
- The person/business you filed a complaint against has 20 days after they receive the complaint to send a response to the provider.
- You are allowed to amend your complaint after the response to your initial complaint.
- They get a chance to respond back to you, amending their initial response.
Typically each of these amendments must be filed with in a week.
Unless there are exceptional circumstance, if no response is made, the Provider is directed by the UDRP to use your complaint to determine their decision.
An arbitrator(s) is selected by the provider and the arbitrator reviews the filed complaint and response, then makes their decision. The actual review typically takes 30 days, but it can take 10 - 20 days for an arbitrator to be selected.
If a respondent looses the case, the domain is placed on "hold" for a brief time (about 10 days) to allow them to request legal relief. If you loose the case you might be able to file a federal suit under the Anticybersquatting Consumer Protection Act of 1999.
If there is not a legal challenge to the decision then the domain is turned over to you by the registrar.
The fastest turn around time for a complaint is around 45 days, the longest is about 90 days.
Changes to UDRP
Starting March of 2010, complaints can be filled in electronic form, although some providers are already accepting complaints electronically.
There is discussion of creating a new expedited process, it was
proposed by CAC in November 2009. Although
comments on the proposal seem to be running against it, including Go Daddy who "strongly opposes" the new process.
What Does It All Mean?
If someone is squatting on your domain there is a process available to you to reclaim it. But it is not cheap (the fee to the provider and maybe a lawyer). Nor is it certain, some cases go against the complaintent.
If you don't want to pay ransom for a domain you feel you are entitled to, then the UDRP gives you an alternate route.
** Legal disclaimer my lawyer wants me to say: Even though I tried to be accurate, I likely made one or more mistakes somewhere in this blog. Since I am not a lawyer and therefore am an not qualified to offer legal advice, this article should not be taken for legal advice. Consult with a qualified lawyer before doing anything.