Why choose dispute resolution for a settlement of a domain name disputes?
Typically, domain name dispute resolution ensures access to the consensus-based UDRP, an alternative that evades court litigation. Added benefits of the UDRP process include allowing flexibility of procedures as applied by chosen Panelists, allowing easier resolution of cases, in a manner that is cheaper and quicker. The UDRP process enables clients to choose and control the process for an optimal outcome. It is a process which enables clients a choice of panelist(s), selected and ranked according to their settlement rates, implementing long-tested and accepted jurisprudence on a diverse variety of domain name issues. Clients may have an option of court litigation, which is not foreclosed.
What is the role of ICANN in relation to the domain name system?
ICANN is a non-profit entity ensuring a smooth and orderly functioning of the Internet through ensuring accountability, healthy rules and needs-based functioning, maintaining the operational stability of the Internet through adequate management of the Domain Name System (DNS), administering a wholistic management, continuity and predictability of the Internet while creating an organized community-based forum for ensuring Internet access that is competitive and conducive to orderly, managed communication.
What is the Uniform Domain Name Dispute Resolution Policy (UDRP)?
Whenever a trademark holder maintains that there are clear cases of abusive, bad-faith registration, the dispute is governed by the UDRP. The UDRP is a policy included in registration agreements for all ICANN-accredited registrars and their customers. ICANN adopted the Uniform Dispute Resolution Policy on August 26, 1999 as a legal mechanism allowing a diverse set of options outside of the litigation environment, to encourage dispute resolution conducive to promoting predictability, consistency, and conformity to the norms and standards of Intellectual Property protection in an efficient and cost-effective manner.
What applicable Domain Names are subject to the Uniform Domain Name Dispute Resolution Policy?
Initially, gTLDs that were subject to mandatory Dispute Resolution included .net, .org, .com. Additionally, ccTLD’s such as .tv , .tel , .co were also subject to the UDRP.
Subsequent Uniform Domain Name Dispute Resolution Policy (UDRP) has been adopted by ICANN-accredited registrars in all gTLDs (.aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel and .travel).
In what circumstance is the UDRP framework applied?
The UDRP framework applies for generic Top Level Domain Names and country code Top Level Domains. The UDRP is an agreement between a customer/trademark holder and its registrar. The UDRP has a requirement for mandatory proceedings based on contractual law. Therefore, a registrar agreement must apply the UDRP whenever an applicant submits a domain name for domain name registration.
The Uniform Domain-Name Dispute Resolution Policy (UDRP) has been adopted by
ICANN-accredited registrars in all gTLDs (.aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel, .travel, and .tv). It is important to note in a circumstance of application of gTLD’s/cc TLD’s domain name registrants, the UDRP is mandatory, whereas, in cases of trademark ownership application of the UDRP arbitration/mediation is optional.
As the provider of official accreditation, is ICANN liable in any manner for proceedings?
ICANN is in no way liable for any actions or follow up. ICANN is solely responsible for organization of domain names registration as well as the norms and standards for the Domain Name Registration Process. Pursuant to UDRP Policy paragraph 4h) ICANN will not participate in Administrative Hearings or be liable for any decisions taken by the Administrative Panel.
What is the role of the Registrar?
The Registrar establishes domain name registration and ensures access by authorized entities to critical information such as names and addresses of registrant. It ensures that a domain name is properly registered and critical information is readily available.
How is a Domain Name Dispute Commenced?
Please see UDRP paragraphs 4d) and 4e).
A complaint is brought through selecting a Dispute Resolution Provider accredited by ICANN and submitting a complaint via electronic transmission. The complaint must include all general statements and legal basis for the complaint. Where applicable procedure is followed, an Administrative Proceeding is conducted by a panel and a decision is reached based on applicable laws, and published on the website.
What is the basis of the Fee and how is it determined?
Determining Payment of Fees
The fee calculation is determined with the following in mind:
•
How many domain name settlements are requested in the complaint?
•
Whether the panel shall consist of Single or Triple panel members (one or three)?
•
The fee consists of an amount to be retained by the Center as an administration fee and an amount to be paid to the panelist(s).
•
The fee is determined based on necessary and reasonable costs (based on Administrative and panelists expenses.
•
Upon full payment of the initial fee by the Complainant, the provider takes required action on a complaint submission. A complaint is deemed withdrawn and terminated if there is non-payment of required and established fees within 10 calendar days of submission of complaint.
•
FEE: the fee in its’ entirety shall be paid by Complainant. All administrative, necessary and reasonable costs shall be determined by the Provider.
•
Respondent selects a 3-member Panel: If a Complainant has elected to have the dispute decided by a single-member Panel and Respondent elects a three-member Panel, Respondent shall be required to pay one-half of the applicable fee for a three-member Panel as set forth in the Provider's Supplemental Rules. This payment shall be made together with the submission of the response to the Provider. In the event that the required payment is not made, the dispute shall be decided by a single-member Panel.
•
Additional fees may be requested by the Provider upon agreement of the Parties and Panel, in exceptional circumstance, for example in the event of an in person hearing.
THE FEE PAYMENT SHALL BE ESTABLISHED as detailed below:
A fee is determined based on a Providers’ determination of reasonable and necessary expenses, as well as whether the Administrative Panel selected a single member or 3 Panelists. Pursuant to UDRP paragraph 4 g) where a Complainant is seeking an Administrative Proceeding, Complainant pays the costs of the proceeding in its’ entirety, whereas if a 3 member Panel is elected by Respondent, ½ the fee is paid by Respondent and ½ is paid by the Complainant.
Fees (U.S. Dollars)
(a) Fees: For a Single-member panel
Number of Domain Names
|
Fee for single panel member
|
Administrative Fee
|
Total
|
| 1-2 |
$1000.00 |
$500.00 |
$1500.00 |
| 3-5 |
$1100.00 |
$600.00 |
$1700.00 |
| 6-10 |
$1200.00 |
$900.00 |
$2100.00 |
| 11-15 |
$1500.00 |
$1200.00 |
$2700.00 |
16 or more
|
Please contact the Center.
|
b) Fees for a Three-member panel
Number of
Domain Names
|
Fee for Three
Member Panel
|
Administrative
Fee
|
Total
|
| 1-2 |
Presiding panelist: $1000.00
Each co-panelist: $500.00
|
$600.00 |
$2600.00 |
| 3-5 |
Presiding panelist: $1300.00
Each co-panelist:$700.00 |
$1000.00 |
$3700.00 |
| 6-10 |
Presiding panelist: $1400.00
Each co-panelist:$1000.00 |
$1100.00 |
$4500.00 |
| 11-15 |
Presiding panelist: $1500.00
Each co-panelist:$1200.00 |
$1300.00 |
$5200.00 |
16 or more
|
Please contact the Center |
(c) Forms of payment
Payment shall be made in one of the following forms:
I. Credit card
II. Certified check or
III. Bank wire transfers.
All transfer charges or other amounts that may be levied in connection with a
payment made to the Center shall be the responsibility of the Party making the payment.
Is there a form on which the Submissions shall be entered?
Yes. Under the UDRP, specific information and elements must be included. A standardized form for a Complaint pursuant to UDRP Rules 3a) and b) may be submitted. According to UDRP requirements, a response pursuant to UDRP Rule 5 a) and b) is provided. Please access the forms as provided by the
Forms Tab.
Where a complaint is regarding numerous Domain Names, is it possible to make a singular complaint?
Yes. Where there are multiple complaints, these may be consolidated pursuant to UDRP paragraph 4f). It is permissible to make a petition where the Domain Name Dispute is brought once an Administrative Panel is established.
When is Domain Name Dispute communication determined?
A Dispute Resolution Provider notifies Parties of the date of commencement of official proceedings as the responsibilities of the DRSP have concluded, and the Administrative Proceedings may begin as the due diligence on the complaint is completed.
Are there limits on submission file sizes and their modalities?
(i) 10 MB. For individual emails, the size of an individual email communication (including attachments)
transmitted to ACDR shall be no larger than 10 MB (ten megabytes).
(ii). The total file size for an entire submission is 50 MB. The total size of one submission
(including any annexes) filed in relation to a UDRP dispute shall not exceed 50 MB (fifty megabytes),
other than in exceptional circumstances (including in the case of pleadings concerning a large number of
disputed domain names).
What should be Included in the Legal Elements of a Complaint?
Each legal element of complaint must be proven:
Please refer to the Legal Elements of Complaint UDRP paragraph 4a) and 4b).
i.
Identical or confusingly similar
ii. Domain name registrant has no legitimate interest
iii. Registration and use in bad faith
What constitutes Bad Faith Registration for a gTLD?
Demonstrating evidence of registration and use in Bad Faith may be found in in UDRP paragraph 4b) see below:
Evidence of Registration and Use in Bad Faith. For the purposes of UDRP Paragraph 4(a)(iii),4 b) 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 you have registered or you have 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 your documented out-of-pocket costs directly related to the domain name; or
(ii) you have 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 you have engaged in a pattern of such conduct; or
(iii) you have registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion wh the complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.
Is it possible to demonstrate a registrants rights and legitimate interests pursuant to UDRP paragraph 4c) in responding to a Complaint?
To Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the UDRP Rules of Procedure in determining how your 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 your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):
(i) before any notice to you of the dispute, your 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) you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are 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.
Should I be Aware of Important Deadlines That May affect Complaint Activity?
Yes.
a.
Overall, an approximate duration of the Administrative Procedure is around 60 days.
b. Once a complaint is submitted, complainant must pay its complaint regitration
fee within 10 days.
c.
Complaint is forwarded with in 3 days of fee payment to the Respondent.
d. A Provider conducts due diligence through
Administrative Compliance for submitted complaint, which is completed in
5 days. Complainant has to cure the deficiency within 5 days.
e.
Administrative Panel of a
single or 3 panelists shall be appointed
within 5 days of the indication.
f. Once provider notifies Respondent of complaint,
Respondent has 20 days to reply to complaint.
How should instances of cyber flight/changes to domain name registration subject to the same proceedings be prevented?
A transfer is only permitted pursuant to UDRP paragraph 3, where a transfer is permitted only in specific circumstances: Where a decision by an Administrative Panel allows a transfer, or where there is an Official Court Order.
Pursuant to UDRP paragraph 7 and 8, transfer to a new domain name holder or to a new registrar while waiting the conclusion of an administrative proceeding is not permitted for 15 days. The Policy of UDRP is required to maintain a status quo.
The Registrar in question of the Domain Name Registrant is notified of a proceeding against Registrant. In such an event, to prevent changes in information or any cyber flight, the Registrar takes note of proceeding and prevents any changes to original Domain Name Registration.
Is there a way to settle a dispute while an Administrative Proceeding is commencing?
Parties may agree on settlement of a case upon agreement of both parties in a wriitten stipulation. A settlement shall terminate the Proceeding.
Can one commence legal proceedings during or after Administrative Proceedings?
Pursuant to Uniform Dispute Resolution Policy (UDRP)paragraphs 18a) and 18b), where a decision on an Administrative Proceeding has not taken place, a party may initiate legal proceedings during the pendency of an administrative proceeding in respect if a domain name dispute that is the subject of a complaint, in furtherance of which the Panel shall be notified.
In the event that legal proceedings are initiated prior or during an administrative proceeding in relation to a submitted complaint, the Panel shall have the discretion to decide whether to suspend or terminate the administrative proceeding, or to proceed to a decision.
Where a Party/Entity chooses Dispute Resolution to resolve a Domain Name Dispute, is the party/entity precluded from initiating a court case on the dispute?
No. A national court may be selected as an option to determine Complainant's rights. Provided notice to the Dispute Resolution Provider is given, an entity may chose the alternative method to resolve a dispute, through traditional means of litigation.
If I use the UDRP Administrative Procedure, can I still go to court?
Yes. Paragraph 4(k) of the UDRP establishes that a mandatory administrative proceeding requirement shall not prevent either the domain name registrant (Respondent) or the third party (Complainant) from submitting the dispute to a court of competent jurisdiction for independent resolution. It is possible for a party to start a lawsuit in court
before an administrative proceeding is commenced. A party can also commence a lawsuit
after the administrative proceeding is concluded if it is not satisfied with the outcome.
Paragraph 18 of the UDRP Rules sets out what action an Administrative Panel may take if court proceedings are initiated prior to or during an administrative proceeding.
Can I use the UDRP Arbitration Procedure for a dispute involving a domain name registered in a country code top level domain?
Yes, provided that the domain name Registration Agreement covering the domain name in issue specifically incorporates the UDRP . This is the case for certain ccTLDs that have adopted the UDRP on a voluntary basis.
Can I use the UDRP Arbitration Procedure to bring a case against the registrar with which I have registered the domain name?
No. The UDRP Arbitration Procedure is only available to resolve disputes between a third party alleging an abusive registration of a domain name (see above) and the domain name registrant.
Can I, as a domain name holder, use the UDRP Arbitration Procedure to bring a case against someone who has threatened to sue me and take away my domain name?
No. The UDRP Arbitration Procedure is only available to resolve disputes brought or commenced by a third party
alleging an abusive registration of a domain name against a domain name registrant.
Can money damages be requested as a portion of the relief granted?
No. It is impermissible for a Panel to award money damages to grant relief other than transfer or cancellation of domain name registration.
What is the Process for Implementing the Decision taken by an Arbitration?
a.
A Registrar is notified of the Decision by the Panel within 3 days of it being rendered.
The Registrar will not implement the Panel's cancellation or transfer decision, and the Registrar will take no further immediate action.
b.
A registrar
shall wait 10 days from point of decision for implementing such decision.
c.
During this period, parties to the proceeding may initiate legal proceedings if they so choose. The domain name holder may submit official documentation such as a copy of a complaint, file-stamped by the clerk of the relevant court. Where there is evidence that the Domain Name Holder (the Respondent) has commenced a lawsuit against the Complainant in a mutual jurisdiction to which the Complainant has submitted in accordance with UDRP Paragraph 3b(xviiii).
d.
Where the Registrar receives adequate and documented (i) evidence satisfactory to it of a resolution between the Parties; (ii) evidence satisfactory to the Registrar that the domain name holder's (the Respondent's) lawsuit has been dismissed or withdrawn; or (iii) a copy of an order from such court dismissing the domain name holder's (the Respondent's) lawsuit or ordering that the domain name holder (the Respondent) does not have the right to continue to use the domain name in question.