Udrp how long

I own the trademark registration. Does that guarantee me the domain? For example, Dove soap and Dove chocolate are both legitimate marks that are not likely to cause consumer confusion because the products are distinct and exist in very different markets.

A UDRP proceeding is private arbitration, however, both parties have the option of appealing to a court of law if unsatisfied with the outcome. Is using the UDRP mandatory for a domain dispute?

For most TLDs top-level domains , yes, however, there are some exceptions for different countries for example, Canada follows its own rules. How long does a UDRP proceeding take to decide a domain dispute? A UDRP proceeding will typically take around months from start to finish, depending on the arbitrator and the number of supplemental filings filed by each party, if necessary. View Larger Image. What exactly is a UDRP proceeding?

In a UDRP proceeding, the complainant must first prove that the following three elements are present: Domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; The opposing party has no rights or legitimate interests in respect of the domain name; and The domain name has been registered and is being used in bad faith.

There is no present way to determine this in advance of selecting the nominees. If none of a disputant's nominees are available, the the choice defaults to the Provider who was selected, in the first place, by the Complainant. In this situation, the Complainant will have had greater preference in the selection of all panelists.

Identify any other legal proceedings that have been commenced or terminated in connection with or relating to the domain name s that are the subject of the Complaint. Rule 5 b vi. See the Implementation of Remedies and the Right to Litigate section below for more information on the relationship between the UDRP and other legal proceedings. State that a copy of the response has been sent or transmitted to the Complainant, in accordance with Rule 2 b , which requires that a party honor the other's preferred means of communication.

In the absence of a stated preference by the opposing party, communications will be sent:. Rule 2 b. Conclude with the following statement followed by the signature of the Respondent or its authorized representative:.

Rule 5 b viii. Attach any documentary or other evidence upon which the Respondent relies, together with a table of contents indexing such documents. Rule 5 c. In most cases, the Complainant bears the duty to pay all fees associated with the administrative proceeding.

The UDRP does not provide for recovery of fees from the losing party. Only when the Complainant elects a one-member panel and the Respondent requests to expand the panel to three does the Respondent incur any obligation to pay, in which case, the Respondent and Complainant split the fees evenly. Policy 4 g. If the Complainant elects a three-member panel on its own initiative, it bears the full cost of the proceeding.

The UDRP does not authorize Providers to levy fines under any circumstances, even for so-called "reverse domain name hijacking" by the Complainant. If after considering the submissions the Panel finds that the complaint was brought in such bad faith or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.

Rule 15 e. The only remedies available under the UDRP are cancellation of the infringing domain name or transfer of its registration to the trademark holder. Before implementing the decision, however, the registrar is required to wait ten business days in order to give the adversely affected registrant the opportunity to file a complaint in a court of Mutual Jurisdiction.

Policy 4 k. If such an action is brought by a domain name holder, the registrar may not transfer or cancel the name until the conclusion of that suit. In order to block the registrar's transfer or cancellation of the domain name while the challenge is pending, the domain name holder must provide official documentation e.

Because the UDRP exists against the backdrop of traditional trademark law, it is important to note that pursuing a claim under the UDRP does not prevent either party from pursuing traditional avenues of litigation or arbitration. However, the consequences of submitting the dispute to court in the midst of a UDRP proceeding are unclear.

The Rules merely state that in cases where a court action is pending, "the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision. Given the newness of the policy, it remains to be seen how much deference either UDRP panels are willing to give foreign or domestic judicial proceedings, or how those courts will treat the decision of a UDRP panel.

In any event, before filing under the UDRP, the trademark holder should consider the consequences of agreeing to submit to a court of mutual jurisdiction, as any challenge to the panel's decision can be brought in either the jurisdiction of the Registrar or the domain holder, even if the holder may be subject to personal jurisdiction in the jurisdiction of the trademark owner. For more information, see the module Jurisdiction and the Internet in Prof.

William T. Fisher's online series, Intellectual Property in Cyberspace Some commentators have questioned the parity of the challenge process, which gives losing registrants only ten days to file a complaint with a proper court, but places no corresponding time restriction on a complainant's ability to seek judicial action. Specifically, some question whether ten business days is enough time for the losing registrant to obtain counsel and file a complaint in an appropriate court.

Michael Froomkin points out: "The [UDRP] puts all nationals of such countries to an unreasonable choice: they must either give up their home forum by registering with a foreign registrar, or do a great deal of advance legal work before they even know the result of the arbitration if they want to have a meaningful chance of appeal. Note that the same does not apply to a losing challenger, who can wait as long as he likes before trying for a second bite at the legal apple, subject only to laches or a statute of limitations.

One should consult the ICANN site for the most current list of Providers each of which maintains a public list of its panelists. Though all of the providers apply the general UDRP rules to the disputes, each provider has its own supplemental rules of which both parties should be aware. The following is a brief comparison of the three providers fees. DEC Disputes. In order to file a complaint under the UDRP, the trademark holder must provide the name and contact information of the registrant of the domain name s in question.

What follows is a guide on how to search for this information, particularly in cases where the registrant in question has registered multiple domain names. Bulk registration of domain names is one of the hallmarks of cybersquatting and is accordingly listed as one of the enumerated circumstances evidencing bad faith under the UDRP. Paragraph 4 b ii of the Policy states that evidence of bad faith exists where the domain name was registered "in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [the registrant has] engaged in a pattern of such conduct.

Therefore, in filing a complaint, one aspect of bad faith the Complainant may wish to allege is that the domain name owner in question has a pattern of bad faith registration. But how can one determine whether such a pattern exists? Unfortunately, the process for discovering this pattern is not as simple as one might hope.

An authoritative identification of even a single domain name owner may require a two-step process. For the name and contact information of an individual registrant, one must take a second step, namely go to the separate web site of the registrar identified in the first search either the Network Solutions registrar database or one of its now many competitors and do a second Whois search in there.

This second step reveals the required contact information about the domain holder. Recently, many of the registrars as well as several independent sites have designed software that conflates the two steps into one, allowing anyone to find out the registrant's contact information by just entering the domain name.

See Register. However, trademark holders wishing to find out whether a single party has registered multiple domain names are still in a bind. Most of these search engines currently allow searching by domain name, but not by the name of the individual registrant. If the trademark holder already knows what those domain names are perhaps because they are being auctioned on an Internet auction site or because the registrant has offered to sell them directly to the trademark holder , then the complainant should have no trouble getting the contact information from either the above search engines or through the Whois search functions of the domain name registrars.

At the moment, the most useful of these is the Whois search function on the Network Solutions registrar database separate from the NSI Registry database. This allows the trademark holder or anyone interested in learning how many names someone has registered to search by a number of criteria, including: name, company name, administrative contact or agent, NIC handle, and nameserver.

However, there are currently two limitations on the usefulness of this search. First, when searching by criteria other than the domain name, the search is limited to those names registered through the Network Solutions Registrar. Though this is currently the largest such database, the search will not turn up names registered through the other registrars.

Keeping in mind that competition was introduced into the domain name registration industry only last November, as the industry develops, a search only through Network Solutions may not turn up all of the domain names someone has registered. For an example, go to www. The second limitation is that Network Solutions limits the search to 50 results. While 50 bad-faith registrations is likely to constitute a pattern under any circumstances, there is no guarantee that the first 50 results are going to demonstrate bad faith by one particular person.

Results are not necessarily in alphabetical order. The targeted cybersquatter may not be revealed in the first 50 hits, especially if the name is a common one. Also, a cybersquatter might register in slight variations of his name John Smith, J. Smith, Smith Productions and one would need to check other contact data to determine a connection.

To overcome some of these limitations, Network Solutions offers a more extensive search service, known as the Domain Record Retrieval Service DRRS , which searches the Network Solutions Registrar database for matches to the criteria the customer provides.

The searching party should note, however, that the search covers only the database of the NSI Registrar, not the more extensive one of the NSI Registry, so that any search conducted through service will not yield information on domains registered through the other ICANN-approved registrars.

The fee covers a search for one character string only. One must contact the Network Solutions to obtain this service. The fate of these search limitations and the future access to registration information is unclear. During the term of this Agreement:.

At its expense, Registrar shall provide public access on a real-time basis such as through a Whois service to those data elements, that are designated from time to time according to an ICANN-adopted policy, concerning all active SLD [Second Level Domain] registrations sponsored by Registrar in the registry for the.

The name of the SLD being registered; b. The corresponding names of those nameservers; d. The identity of Registrar; e. The original creation date of the registration; f. The expiration date of the registration; g. The name and postal address of the SLD holder; h. The name, postal address, e-mail address, voice telephone number, and where available fax number of the technical contact for the SLD; i.

The name, postal address, e-mail address, voice telephone number, and where available fax number of the administrative contact for the SLD; j. The name, postal address, e-mail address, voice telephone number, and where available fax number of the zone contact for the SLD; and k. Any remark concerning the registered SLD name that should appear in the Whois data.

The terms of this agreement state only that the registrar will provide public access to the data at the expense of the registrar, but apart from the Whois search suggestion, do not state how that access is to be provided. It remains to be seen whether ICANN will allow the continuation of the current state of affairs in which a majority of the registrars provide a Whois search which allows searches only by domain, but not by registrant or other criteria.

Though providing a search by registrant is obviously useful to parties seeking relief under the UDRP, one should also consider the countervailing privacy concerns stemming from the requirement that so much personal information be so publicly accessible.

One might also gather data about multiple ownerships by searching the domain name resellers and auction sites such as Afternic. The US Patent and Trademark office has issued guidelines for registering domain names as trademarks.

The fees described above do not include any payment that might have to be made to a lawyer representing a party in the administrative proceeding. Following the formal commencement of an administrative proceeding, the WIPO Center publishes on its website the domain name s in issue, the date of the formal commencement of the administrative proceeding and the status of the case.

According to Paragraph 11 of the UDRP Rules, unless the parties to an administrative proceeding agree otherwise, or the Registration Agreement that relates to the domain name in question specifies otherwise, the language of the administrative proceeding will normally be the language of the relevant Registration Agreement. The Administrative Panel, however, has the discretion to designate a different language, taking into consideration the circumstances of the administrative proceeding e.

The Administrative Panel also has the authority to order parties to translate documents that are not in the language of the administrative proceeding. Paragraph 13 of the UDRP Rules makes it clear that there shall be no in-person hearings including hearings by teleconference, videoconference, and web conference , unless the Administrative Panel determines, only as an exceptional matter, that a hearing is necessary in order for it to make its decision.

To which dispute resolution service provider do I submit my Complaint? The Complaint may be submitted to any accredited dispute resolution service provider. Not only must the Complaint conform to the requirements specified in the UDRP Rules, but also to those specified in the chosen Provider's supplemental rules , if any. The WIPO Center also has specialist knowledge in intellectual property and considerable experience in dispute resolution administration generally. Is there a standard form in which a Complaint should be submitted?

Its use as a basis for the preparation of a party's complaint does not preclude the possibility of that Complaint being found deficient following the WIPO Center's formalities compliance review, nor does reliance on the model guarantee a Complainant's success on the merits.

Please consult the filing guidelines for further information. Unless the Complainant and the Respondent agree otherwise, or if specified otherwise in the Registration Agreement, the Complaint must normally be in the same language as the Registration Agreement. The Administrative Panel can order any attachments not in the same language as the Registration Agreement to be translated in full or in part by and at the cost of the submitting party.

Does the Complaint have to be prepared and submitted by a lawyer? While the assistance of a lawyer may be helpful, there is no requirement that the Complaint be prepared or submitted by a lawyer. In addition, the WIPO Center has prepared a model Complaint and filing guidelines which serve as a checklist of elements to include in a Complaint. Under Paragraph 3 c of the UDRP Rules, the Complaint may relate to more than one domain name, so long as the person or entity that is the registrant of the domain names specified in the Complaint is the same.

Do any payments have to be made when filing the Complaint? Is the Complainant required to send a copy of the Complaint to the Respondent?

Which contact details should be used when sending the Complaint to the concerned Registrar s and what communication methods should be used? Certain registrars have established specific contact details that should be used for these purposes, which may be obtained by contacting the registrar s in question. Where can I get information about who is the registrant of a domain name? For ccTLDs, or for additional information, the concerned registrar's Whois service may be used accessed via the registrar's website.

Under the terms of the agreement which the domain name registrant entered into when registering the domain name, the registrant must submit to the administrative proceeding. The Respondent has 20 days from the date of commencement of the administrative proceeding to submit a Response.

How many days does a Respondent have to file a Response? According to Paragraph 5 a of the UDRP Rules, the Respondent must file its Response within 20 days of the commencement of the administrative proceeding. An administrative proceeding is deemed to have formally commenced once the dispute resolution service provider has formally notified the Complaint in accordance with Paragraph 2 a of the UDRP Rules. What happens if a Response is not filed or not filed on time?

If the Respondent does not file its Response including any payment that may be required by the applicable deadline, the Respondent will be considered in default. The Panel will be informed of the Respondent's default. It will decide the dispute based on the information available to it and may draw such inferences as it deems appropriate from the Respondent's failure to submit a timely Response. Is there a standard form in which a Response should be submitted? In addition to a model Response , the WIPO Center has prepared filing guidelines which parties may wish to consult for guidance.

The use of the model Response and filing guidelines as a basis for the preparation of a party's Response does not guarantee a Respondent's success on the merits. When submitting a Response electronically, what format should be used? Unless the Complainant and the Respondent agree otherwise, or if specified otherwise in the Registration Agreement, the Response must normally be in the same language as the Registration Agreement.

While the assistance of a lawyer may be helpful, there is no requirement that the Response be prepared or submitted by a lawyer. In addition, the WIPO Center has prepared a model Response and filing guidelines which serves as a checklist of the elements to include in the Response.

In preparing my Response, how do I demonstrate my rights to and legitimate interests in the domain name that is the subject of the Complaint? Paragraph 4 c of the UDRP Policy states that any of the following circumstances, in particular but without limitation, if found by the Administrative Panel to be proved based on its evaluation of all evidence presented, shall demonstrate the domain name registrant's rights or legitimate interests to the domain name for the purposes of Paragraph 4 a ii of the Policy:.

The only time a fee has to be paid by the Respondent is when the Complainant chooses to have the case decided by a single Panelist, but the Respondent prefers to have the case decided by three Panelists.

In such cases, the applicable fee is shared equally between the Complainant and the Respondent. The Respondent must submit its payment together with its Response. If it does not, the Respondent will be considered in default and the Center may disregard the Respondent's designation of the number of Panelists.

Which contact details should be used when sending the Response to the Complainant and what communication methods should be used? The Response should be submitted electronically including all annexes to the Complainant and to the Center. Does the Response have to be sent to the registrar s?