UDRP Proceedings
As part of our Trademark practice, we provide UDRP domain name proceedings litigation services.
UDRP stands for Uniform Domain Name Dispute Resolution Policy. UDRP proceedings are legal actions brought for resolution of disputes regarding registration of Internet domain names. The Internet Corporation for Assigned Names and Numbers (ICANN) established the UDRP process. It provides a common method used in the resolution of domain name disputes.
Our intellectual property lawyers understand Internet and domain laws. We solve domain name disputes through settlements, UDRP proceedings, as well as litigation. In addition, we provide counseling on proactive measure to help avoid domain name disputes.
Domain Registration
At domain purchase, the registrant may be required to “represent and warrant” that the registration of that particular domain will not infringe upon or violate the rights of any third party. Additionally, the registrant agrees to participate in proceedings similar to arbitration should there be any disputes regarding that domain. However, registrants likely neglect reading the fine print in the registrar domain name polices. It isn’t until after a domain dispute arises that many domain owners look into domain rights and policies.
We advise clients on domain name availability in connection with third party trademark rights. In addition, as part of our trademark search services, we review domain names for potential conflict.
Proceedings
Trademark infringement is usually the cause for UDRP cases. Trademark infringement through domain name registration occurs through cybersquatters more often than honest mistake. When determining whether a cause of action exists, the UDRP administrative review panel will analyze various factors including whether:
The registered domain name is identical or confusingly similar to the trademark,
Registrant has any legitimate rights or interests in the domain, and
The domain name was registered and used in bad faith
To assess bad faith, the UDRP panel will use several factors as tests, including but not limited to:
What the registrant is using the domain for,
Past acts by the registrant,
Whether the domain is being used to disrupt the business of a competitor, and
Whether the domain is being used to palm off of an established mark
These factors are not all-inclusive. The finding of only one can establish bad faith.
We help clients file UDRP proceedings as well as defend against them. We advise clients on potential for success in UDRP cases. In addition, we provide options, such as settling cases before decision or filing federal litigation. Our attorneys work with clients to find the best options suited to the particular situation.
Drafting Complaints and Responses
The complainant must file a well drafted complaint to initiate the proceeding. It should prove all elements as well as refute any potential defenses. The review panel has some discretion with allowing additional submissions in UDRP proceedings. So, the contents of the initial complaint is important to success.
In addition, once a UDRP action is filed against a domain owner, the time limits for proper response are short. Failure to take action to respond could result in loss of the domain name. Therefore, it is important to seek the advise of domain attorneys with experience and knowledge in defending UDRP dispute cases. A response should provide evidence to disprove each element claimed by the complainant. The administrative review panel will then review and grant an opinion most often without any further discussion or allowance of additional evidence. Litigation would be necessary to prevent transfer of a domain lost in a proceeding.
Our domain attorneys advise clients on chances for success in UDRP proceedings. Our attorneys analyze the strength of the trademark involved against defenses available to defendant.
Protecting Against Domain Name Disputes and UDRP Actions
We have successful experience winning numerous UDRP proceedings for our clients. However, we also provide advice on protecting against domain name disputes through proactive measures, for example:
Domain name and trademark clearance searches before choosing a domain or trademark
Cybersquatting protections through monitoring and enforcement
Defensive domain name registration and maintenance
Worldwide domain monitoring and watch services
Competitor tracking services
Cease & desist letters, settlement negotiation, or litigation
Trademark protection and enforcement programs
Our attorneys assist with internet and domain disputes, including cybersquatting, domain hijacking, hacking and other related issues. In addition, we offer consultation on best business practices to help avoid domain and internet related issues. As part of our trademark protection services, we provide domain name protection through clearance, registration, and dispute resolution.
Litigating Disputes
We have extensive experience litigating UDRP proceedings, cybersquatting lawsuits, and domain name disputes. Read more about our litigation services at our intellectual property litigation overview page and our business litigation overview page, including Cybersquatting/ACPA Litigation, Domain Name Litigation, and Trademark Litigation.
Additional Insights
For more information on UDRP domain name proceedings, see our Legal Insights and Industry Solutions pages.
