Uniform Domain-Name Dispute-Resolution Policy (UDRP) and getting control of a Domain Name

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a process established by the Internet Corporation for Assigned Names and Numbers (ICANN) to resolve disputes involving the registration and use of domain names. ICANN's role is to establish and maintain the UDRP policy, accredit dispute resolution service providers, and ensure compliance with the policy by domain name registrars and registries. However, ICANN itself does not directly handle or decide individual UDRP cases. Here's a description of the UDRP process for gaining control of a domain name:

1. Complaint Filing:
The process begins when the complainant (the party seeking to gain control of the domain name) files a complaint with an ICANN-approved dispute resolution service provider, such as the World Intellectual Property Organization (WIPO) or the National Arbitration Forum (NAF).

Some of the major ICANN-accredited dispute resolution service providers for UDRP cases include:

1. World Intellectual Property Organization (WIPO)
2. National Arbitration Forum (NAF)
3. Asian Domain Name Dispute Resolution Centre (ADNDRC)
4. The Czech Arbitration Court (CAC)

These service providers follow the UDRP rules and procedures established by ICANN, but they operate independently in managing the dispute resolution process, including accepting complaints, appointing panelists, and issuing decisions.

2. Complaint Requirements:
The complaint must meet specific requirements, including providing evidence that the complainant has rights in a trademark or service mark, and that the domain name is identical or confusingly similar to the trademark. The complainant must also demonstrate that the current domain name holder has no legitimate rights or interests in the domain name and that the domain name was registered and is being used in bad faith.

Bad faith in UDRP proceedings can be demonstrated in several ways. One example is the passive holding of a domain name, which may constitute bad faith use.

Other circumstances that tend to show bad faith include the complainant’s trademark being well-known, no response to the complaint, concealment of identity including false or inaccurate contact information, and the impossibility of conceiving a good faith use of the domain name § 16.04 The UDRP.

In addition, if the registrant registered the domain name prior to the earliest date the trademark owner can claim priority, the registrant will likely have an absolute defense. However, courts have held the act of renewing a domain name constitutes a new registration. Therefore, even if the registrant originally registered a domain name prior to a trademark owner having established rights, the trademark owner may be able to prevail by demonstrating bad faith based upon the domain name renewal.

Moreover, bad faith use of a domain name may be used as evidence that the domain name was itself registered in bad faith . For instance, if a domain name owner changes his websites after the initiation of the UDRP proceeding, this can demonstrate the owner's bad faith Black v. Irving Materials, Inc., 2019 U.S. Dist. LEXIS 243303.

Finally, if a complainant files a complaint in bad faith in order to steal a domain name to which the respondent is entitled, this can be considered as "reverse domain name hijacking".

3. Notification and Response:
The dispute resolution service provider notifies the domain name holder (respondent) of the complaint and provides them with an opportunity to respond within a specific timeframe, typically 20 days.

4. Panel Appointment:
If the respondent submits a response, the dispute resolution service provider appoints a panel of one or three independent and impartial panelists to consider the case. If the respondent does not submit a response, the panel can proceed with a decision based solely on the complaint.

5. Panel Evaluation:
The panel evaluates the evidence and arguments presented by both parties, considering the UDRP policy requirements and applicable rules. The panel must determine whether the three elements of the UDRP policy have been met: (1) the domain name is identical or confusingly similar to a trademark in which the complainant has rights, (2) the respondent has no legitimate rights or interests in the domain name, and (3) the domain name has been registered and is being used in bad faith.

6. Panel Decision:
After considering the evidence and arguments, the panel issues a written decision, either transferring the domain name to the complainant or denying the complaint. The decision is publicly available and binding on the parties, subject to limited grounds for appeal or court challenge.

7. Implementation:
If the panel orders the transfer of the domain name, the registrar is required to implement the decision and transfer the domain name to the complainant or cancel the registration, as directed by the panel's decision.

It's important to note that the UDRP process is an administrative procedure and does not preclude either party from pursuing other legal actions, such as filing a lawsuit in court. Additionally, the UDRP only applies to specific types of trademark-based disputes and does not cover other types of domain name disputes or general cybersquatting cases.