ICA has long called for comprehensive review and reform of the UDRP to assure that it is administered in a predictable manner by all dispute resolution providers and provides domain registrants with adequate procedural and substantive due process rights. ICANN has now undertaken an ongoing review of all rights protection measures that will address the UDRP commencing in 2018.
The UDRP stands for Uniform Domain Name Dispute Resolution Policy (the “Policy”). It was established and adopted at ICANN’s inception as a dispute resolution policy to resolve disputes between trademark holders and domain owners more quickly and cost-effectively than judicial litigation. If a trademark-owning complaint is successful under the Policy, the domain owner loses his or her right to be the registrant of the disputed domain name, and the domain name is transferred to the trademark holder that initiated the complaint (or, alternatively, the trademark holder can request that the domain name registration be cancelled instead, but this rarely happens). In order to prevail the complainant is required to demonstrate that the registrant registered and used the domain in bad faith.
The Policy was adopted to help address the problem of cybersquatting, which occurs when a domain name that is identical or confusingly similar to a trademark is registered and used to target another party’s trademark with infringing intent. Any person who registers a domain name covered by ICANN’s UDRP policy agrees that his or her domain registration is subject to being challenged under the UDRP if another entity believes that the domain registrant is engaged in cybersquatting. When a complaint is filed under the UDRP, the domain owner has a time-limited opportunity to file a response to defend his or her legitimate ownership of the disputed domain. If no response is filed then the panel reviewing the complaint is supposed to remain even-handed, but filing a response is the only way to assure that the most salient facts in the registrant’s favor will be considered.
ICANN has accredited various organizations (“UDRP Providers”) around the globe to administer the Policy, including the World Intellectual Property Organization (WIPO) in Geneva, Switzerland and the National Arbitration Forum in Minnesota, USA. However, ICANN has no contracts with these providers and conducts no regular review of their performance to assure that the UDRP is actually being administered in a uniform manner. The rights holder alleging the cybersquatting (the “Complainant”) selects the UDRP Provider and also controls the timing of the filing. The UDRP Provider in turn selects the panel of trademark law experts that will review and decide the case. The panel is usually comprised of a single panelist; however, either the Complainant or the domain owner can request that a three member panel be used instead at an additional expense, and many owners of valuable domains tend to opt for a three-member panel rather than rely on the opinion of a single individual.
All generic top level domains (gTLDs) under contract to ICANN, such as .com, .net, .org, .biz, .info and the new gTLDs such as .club, .xyz, .global, and .web are subject to the UDRP as an ICANN Consensus Policy. Country code top level domains (ccTLDs) allocated to specific countries — such as .cn to China, .in to India, .uk to the United Kingdom, .us to the USA, and .de to Germany are subject to whatever dispute proceedings have been adopted by those countries. They are usually quite similar to the UDRP but also usually have some unique variations.
The UDRP policy and explanatory materials can be found here-
Some discussions of the UDRP can be found here-
October 19, 2018