The Uniform Domain-Name Dispute-Resolution Policy (
UDRP) is a
process established by the Internet Corporation for Assigned Names and Numbers (
ICANN) for the resolution of disputes regarding the registration of
Internet Domain Names. The UDRP currently applies to all .biz, .com, .info, .name, .net, and .org top-level domains, and some country code top-level domains. It is supplemented by Rules for Uniform Domain Name Dispute Resolution Policy (
Rules).
Now ICANN is planning to expand the list of generic top level domain names (gTLD)
among other things. The same would be decided by ICANN through a vote at the
second public meeting of the year on 19-20th June 2011 at Singapore.
Since domain name disputes are going to increase in near future, Perry4Law Techno Legal Base (
PTLB), the premier techno legal segment of India’s exclusive techno legal ICT and IP Law Firm
Perry4Law, is sharing the UDRP procedure with all interested person and institutions.
Readers are strongly advised to refer the original sources at ICANN as the UDRP and Rules may change from time to time. Further, the reference to ICANN may be considered to be the reference to concerned “Registrar” where the context so requires.By applying to register a domain name or by asking the registrar to maintain or renew a domain name registration, the applicant represent and warrant to the registrar that:
(a) The statements that he made in his Registration Agreement are complete and accurate;
(b) To his knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party;
(c) He is not registering the domain name for an unlawful purpose; and
(d) He will not knowingly use the domain name in violation of any applicable laws or regulations.
Thus, it is the applicant’s responsibility to determine whether his domain name registration infringes or violates someone else's rights.
All registrars
must follow the UDRP. Under the policy, most types of trademark-based domain-name disputes must be resolved by agreement, court action, or arbitration before a registrar will cancel, suspend, or transfer a domain name. Disputes alleged to arise from abusive registrations of domain names (for example, cybersquatting) may be addressed by expedited administrative proceedings that the holder of trademark rights initiates by filing a complaint with an approved dispute-resolution service provider.
Thus, to invoke the policy, a trademark owner should either
(a) File a complaint in a court of proper jurisdiction against the domain-name holder (or where appropriate an in-rem action concerning the domain name) or
(b) In cases of abusive registration submit a complaint to an approved dispute-resolution service provider.
The registrar will cancel, transfer or otherwise make changes to domain name registrations under the following circumstances:
(a) Subject to the provisions of
Paragraph 8, on receipt of written or appropriate electronic instructions by the registrar from a complainant or his authorised agent to take such action;
(b) On receipt of an order from a court or arbitral tribunal, in each case of competent jurisdiction, requiring such action; and/or
(c) On receipt of a decision of an Administrative Panel requiring such action in any administrative proceeding to which the complainant was a party and which was conducted under this Policy or a later version of this Policy adopted by ICANN. (See
Paragraph 4(i) and
(k) below.)
The registrar may also cancel, transfer or otherwise make changes to a domain name registration in accordance with the terms of his Registration Agreement or other legal requirements.
Paragraph 4 of the UDRP mentions about the circumstance when administrative proceedings are mandatory. These proceedings will be conducted before one of the administrative-dispute-resolution service providers (each, a "Provider")
listed at ICANN.
Paragraph 4(a) provides that the domain name holder must submit to a mandatory administrative proceeding in the event that a third party (a "complainant") asserts to the applicable Provider, in compliance with the Rules of Procedure, that:
(i) Holder’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) Holder has no rights or legitimate interests in respect of the domain name; and
(iii) Holder’s domain name has been registered and is being used in bad faith.
In the administrative proceeding, the complainant must prove that each of these three elements are present.
Paragraph 4(b) provides that for the purposes of
Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(i) Circumstances indicating that holder has registered or holder has acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of his documented out-of-pocket costs directly related to the domain name; or
(ii) Holder has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that holder has engaged in a pattern of such conduct; or
(iii) Holder has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the holder has intentionally attempted to attract, for commercial gain, Internet users to his web site or other on-line location, by creating a likelihood of confusion with the complainant's mark as to the source, sponsorship, affiliation, or endorsement of his web site or location or of a product or service on his web site or location.
Paragraph 4(c) provides that when the holder of a domain name receives a complaint, he should refer to
Paragraph 5 of the Rules of Procedure in determining how his response should be prepared. Any of the following circumstances, in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate his rights or legitimate interests to the domain name for purposes of
Paragraph 4(a)(ii):
(i) Before any notice to the holder of the disputed domain name, his use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) The holder (as an individual, business, or other organisation) has been commonly known by the domain name, even if he has acquired no trademark or service mark rights; or
(iii) The holder is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Paragraph 4(d) provides that the complainant shall select the Provider from among those approved by ICANN by submitting the complaint to that Provider. The selected Provider will administer the proceeding, except in cases of consolidation as described in
Paragraph 4(f).
Paragraph 4(e) provides that the Rules of Procedure state the process for initiating and conducting a proceeding and for appointing the panel that will decide the dispute (the "Administrative Panel").
Paragraph 4(f) provides that in the event of multiple disputes between the holder and a complainant, either the holder or the complainant may petition to consolidate the disputes before a single Administrative Panel. This petition shall be made to the first Administrative Panel appointed to hear a pending dispute between the parties. This Administrative Panel may consolidate before it any or all such disputes in its sole discretion, provided that the disputes being consolidated are governed by this Policy or a later version of this Policy adopted by ICANN.
Paragraph 4(g) provides that all fees charged by a Provider in connection with any dispute before an Administrative Panel pursuant to this Policy shall be paid by the complainant, except in cases where the holder elects to expand the Administrative Panel from one to three panelists as provided in
Paragraph 5(b)(iv) of the Rules of Procedure, in which case all fees will be split evenly by the holder and the complainant.
Paragraph 4(h) provides that the ICANN do not, and will not, participate in the administration or conduct of any proceeding before an Administrative Panel. In addition, ICANN will not be liable as a result of any decisions rendered by the Administrative Panel.
Paragraph 4(i) provides that the remedies available to a complainant pursuant to any proceeding before an Administrative Panel shall be limited to requiring the cancellation of holder’s domain name or the transfer of his domain name registration to the complainant.
Paragraph 4(j) provides that the Provider shall notify ICANN of any decision made by an Administrative Panel with respect to a domain name the holder has registered with ICANN. All decisions under this Policy will be published in full over the Internet, except when an Administrative Panel determines in an exceptional case to redact portions of its decision.
Paragraph 4(k) provides that the mandatory administrative proceeding requirements set forth in
Paragraph 4 shall not prevent either the holder or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded. If an Administrative Panel decides that holder’s domain name registration should be canceled or transferred, ICANN will wait ten (10) business days (as observed in the location of ICANN’s principal office) after ICANN is informed by the applicable Provider of the Administrative Panel's decision before implementing that decision. ICANN will then implement the decision unless it has received from the holder of a domain name during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that the holder has commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under
Paragraph 3(b)(xiii) of the Rules of Procedure. (In general, that jurisdiction is either the location of ICANN’s principal office or of holder’s address as shown in ICANN’s Whois database. See
Paragraphs 1 and
3(b)(xiii) of the Rules of Procedure for details.) If ICANN receives such documentation within the ten (10) business day period, it will not implement the Administrative Panel's decision, and it will take no further action, until it receives:
(i) Evidence satisfactory to ICANN of a resolution between the parties;
(ii) Evidence satisfactory to ICANN that holder’s lawsuit has been dismissed or withdrawn; or
(iii) A copy of an order from such court dismissing holder’s lawsuit or ordering that holder do not have the right to continue to use your domain name.
All other disputes between the holder of a domain name and any party other than ICANN regarding holder’s domain name registration that are not brought pursuant to the mandatory administrative proceeding provisions of
Paragraph 4 shall be resolved between the holder and such other party through any court, arbitration or other proceeding that may be available.
ICANN will not participate in any way in any dispute between holder and any party other than ICANN regarding the registration and use of holder’s domain name. Holder/Complainant shall not name ICANN as a party or otherwise include ICANN in any such proceeding. In the event that ICANN is named as a party in any such proceeding, ICANN reserves the right to raise any and all defenses deemed appropriate, and to take any other action necessary to defend itself.
ICANN will not cancel, transfer, activate, deactivate, or otherwise change the status of any domain name registration under this Policy except as provided in
Paragraph 3 above.
The holder may not transfer his domain name registration to another holder
(i) During a pending administrative proceeding brought pursuant to
Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of ICANN’s principal place of business) after such proceeding is concluded; or
(ii) During a pending court proceeding or arbitration commenced regarding holder’s domain name unless the party to whom the domain name registration is being transferred agrees, in writing, to be bound by the decision of the court or arbitrator. ICANN reserves the right to cancel any transfer of a domain name registration to another holder that is made in violation of this subparagraph.
The holder may not transfer his domain name registration to another registrar during a pending administrative proceeding brought pursuant to
Paragraph 4 or for a period of fifteen (15) business days (as observed in the location of ICANN’s principal place of business) after such proceeding is concluded. Holder may transfer administration of his domain name registration to another registrar during a pending court action or arbitration, provided that the domain name he has registered with ICANN shall continue to be subject to the proceedings commenced against him in accordance with the terms of this Policy. In the event that the holder transfers a domain name registration to ICANN during the pendency of a court action or arbitration, such dispute shall remain subject to the domain name dispute policy of the registrar from which the domain name registration was transferred.
ICANN reserves the right to modify this Policy at any time. ICANN will post its revised Policy at
at least thirty (30) calendar days before it becomes effective. Unless this Policy has already been invoked by the submission of a complaint to a Provider, in which event the version of the Policy in effect at the time it was invoked will apply to the holder until the dispute is over, all such changes will be binding upon the holder with respect to any domain name registration dispute, whether the dispute arose before, on or after the effective date of ICANN’s change. In the event that the holder objects to a change in this Policy, his sole remedy is to cancel his domain name registration with ICANN, provided that he will not be entitled to a refund of any fees he paid to ICANN. The revised Policy will apply to the holder until he cancels his domain name registration.
United Nations Commission on International Trade Law (UNCITRAL) is currently holding its 44th Session from 27 June to 8 July 2011. It would discuss many important aspects having a direct bearing upon International issues.
