The Uniform Domain Name Dispute Resolution Process (UDRP) is incorporated via contract into all generic top-level domain names (gTLD) these include .com, .net and .org. This means that the owners of gTLDs will have signed up to resolve disputes (if requested by a third party) by way of the UDRP.
The UDRP is a quick cost-effective way of resolving domain disputes which is administered by the World Intellectual Property Organization (WIPO). There is a wealth of information on within the UDRP Rules and Policy but a UDRP action comes down to three main heads:
Firstly, a complainant must prove that the domain name in question is identical or confusingly similar to a trade mark in which the complainant has rights. This is a low threshold and generally if you have trade mark which is identical or similar to the domain you are in good shape.
Second, it must be proved that the respondent has no rights or legitimate interests in the domain name. This boils down to whether the respondent is using the domain name in a genuine way. In the UDRP policy, there are a number of non-exhaustive examples such as that the respondent has been commonly known by the domain name. If the respondent is not acting in a genuine way, or using the domain name not in the ordinary course of business, you are looking good under this head.
Thirdly, the domain name must have been registered and is being used in bad faith. This is a key concept of the UDRP. Again, the UDRP Policy sets out a number of non-exhaustive examples. One good example which is often seen is an offer to sell the domain name. If a respondent has registered the domain name with the view to selling it to the genuine rights owner then that’s a home straight!
If it is possible to prove the three points above, you may be in with a good chance of filing a UDRP complaint along with a request for WIPO to UDRPlease transfer the domain to the rightful owner!
Just because you don’t own your dream domain name doesn’t mean you can’t get it in a quick cost-effective manner. Briffa advises on all aspects of domain name law and practice and offers free consultations to all new clients. If you would like to have a call or a meeting at our offices in the Business Design Centre in London, please call 020 7096 2779 or email info@briffa.com.
Written by Sam O’Toole, Solicitor
