UDRP procedure

The UDRP procedure, named after the Uniform Domain Name Dispute Resolution Policy adopted by ICANN in 1999, is an out of court procedure allowing a trade mark proprietor to obtain the transfer or cancellation of a domain name registered and used in bad faith. It is binding on every domain name holder in the generic extensions by virtue of the registration agreement, and it is administered by approved providers, including the Arbitration and Mediation Center of WIPO.

The three cumulative conditions

The complainant must establish three elements. The domain name must be identical or confusingly similar to a trade mark in which it has rights, the comparison being made between the domain name, excluding the extension, and the trade mark, without regard to the goods. The domain name holder must have no rights or legitimate interests in it, which the complainant establishes by a prima facie case, leaving the respondent to demonstrate a bona fide offering of goods or services, that it is commonly known by that name, or a legitimate non commercial or fair use. Finally, the domain name must have been registered and be used in bad faith, the two conditions being cumulative, as shown by registration with a view to resale to the right holder, registration intended to prevent the right holder from reflecting its trade mark, disruption of a competitor’s business or the attraction of internet users through confusion. Passive holding of a name reproducing a well known trade mark may amount to use in bad faith.

The course of the procedure

The procedure is written and swift. The complaint is filed with the provider, which notifies it to the domain name holder, who has twenty days to respond. A panel of one or three experts renders its decision, in principle, within fourteen days of its appointment, and the registrar implements it after ten business days, unless the respondent brings proceedings before a competent court within that period. The fees, borne by the complainant, depend on the number of domain names and panellists. No hearing is held and no compensation may be awarded.

Scope and limits

The decision has no res judicata effect and does not deprive either party of the right to go to court, before, during or after the procedure. The UDRP procedure is suited to clear cases of cybersquatting and does not lend itself to complex commercial disputes, conflicts between holders of competing rights or domain names registered before the trade mark came into existence, where bad faith at registration is lacking. French domains, for their part, fall under the SYRELI procedure.

Key points

The UDRP procedure makes it possible to obtain, within a few weeks, the transfer of a generic domain name identical or similar to a trade mark, where its holder has no legitimate interest and registered and used it in bad faith. It awards no compensation and does not close the route to the courts. Before filing a complaint, check the registration date of the name against the trade mark rights and gather evidence of use in bad faith.

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This glossary entry is general in scope and does not constitute legal advice.

Dhenne Avocats is a patent litigation firm. Matters outside that field, such as trade marks, designs, copyright and IT contracts, are handled by practitioners the firm works with regularly, and by the firm itself when they arise in a patent dispute.

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