LAWYER IN UDRP PROCEDURE
What is the purpose of a UDRP procedure?​
The purpose of the UDRP (Uniform Domain-Name Dispute Resolution Policy) procedure is to resolve claims between registered domain name holders and third parties who believe that the registration and use of a domain name is abusive or has been carried out in bad faith. This is the case, for example, if the domain name infringes a protected trademark.
A UDRP procedure makes it possible to ask the registrar of the domain name concerned to cancel or transfer the domain name registration.
This procedure has the advantage of being quicker and less costly than legal proceedings before a state court. It is also simpler because it can be implemented regardless of the place of establishment of the complainant, the respondent or the registrar.
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In which cases should UDRP proceedings be initiated?
The UDRP procedure is only open to registrants of generic top-level domain names (or gTLDs, such as .com, .net, .org) and national domain names for which the management offices have voluntarily accepted the UDRP Principles (ccTLDs, such as .fr, .es, .ch).
It can be filed by any individual or legal entity (company, association) who provides proof that the following 3 cumulative conditions have been met:
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1. The domain name is identical or confusingly similar to a trademark on which the applicant has rights.
2. The registrant has no rights or legitimate interests in using the domain name
3. The domain name has been registered and is being used in bad faith by the registrant
The registrant's interest in registering and using the domain name may be considered legitimate in the following cases:
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Before being notified that a UDRP proceeding had been initiated, the registrant was using the domain name in good faith to offer goods or services to the public
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The registrant is known by the disputed domain name, even if it is not protected by an industrial property right
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The domain name is being used fairly, in particular with no intention of diverting Internet users from a legitimate domain name
In addition, a recording may be considered to have been made in bad faith in a number of circumstances:
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the domain name has been registered with the aim of subsequently selling it to the owner of the trademark to which it refers (‘cybersquatting’)
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the domain name has been registered with a view to hindering or interrupting a competitor in the exercise of its business, for example to prevent it from incorporating its trademark in the domain name in question
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the registration of the domain name seeks to create confusion among Internet users, in particular by leading them to believe that the site it supports is operated for the trade mark held by the applicant
Other evidence may be provided by the complainant to prove the registrant's bad faith.
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What are the procedural steps?
The UDRP procedure follows 5 main stages: the filing of the complaint, the registrant's response, the appointment of the administrative panel, the pronouncement of the decision and its enforcement. The entire procedure is carried out electronically, without the need for physical hearings or videoconferences.​​
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Step 1: Filing the complaint with an approved settlement entity
The complainant must file his or her complaint with a dispute resolution entity approved by ICANN (Internet Corporation for Assigned Names and Numbers) if the dispute concerns a gTLD, or by the organization responsible for managing the national domain name (in France, Afnic) if it concerns a ccTLD.
The complaint must include a certain amount of information, such as the name and postal and e-mail addresses of the complainant, the number of experts required, the registrar with which the disputed domain name has been registered, information about the respondent, the grounds on which the complaint is based, etc.
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Step 2: The registrant sends a response
The response from the owner of the disputed domain name must be sent within 20 days of the date on which the procedure was initiated, i.e. from the date of notification of the plaintiff's complaint.
If the respondent does not reply within this period, it is deemed to be in default and the panel may draw appropriate conclusions from this failure to reply.
In particular, the response must set out the arguments justifying that the plaintiff may continue to use the domain name in dispute.
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Stage 3: Appointment of the Administrative Commission
The Administrative Commission is the entity responsible for resolving on the dispute between the complainant and the respondent. It is made up of one or three experts appointed by the settlement entity before which the complaint was sent, who are appointed within 5 to 15 days of the respondent sending its reply.
Its members are impartial and independent of the settlement entity, the registrar and the parties. In the case of the WIPO Center, they appear on a list of experts chosen for their impartiality, experience and reputation in the field of domain name dispute resolution.
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Step 4: Announcement of the Administrative Commission's decision
The committee shall give its decision within 14 days of its appointment. It may :
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Order the transfer of the domain name registration to the plaintiff
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Order the cancellation of the domain name registration
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Reject the complaint
It may not order either party to pay damages to the other party.
Except in exceptional circumstances, the Administrative Panel's decision is published on the Internet.
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Step 5: Enforcement of the decision by the registrar
If the Administrative Panel orders the transfer or deletion of the domain name registration, the registrar with which it was registered must carry it out within 10 days of the date on which it was notified by the dispute resolution organization.
In this case, the registrant has the option of going to court to obtain a favourable decision challenging the Administrative Panel's decision.
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How long does a UDRP procedure last?
The advantage of a UDRP procedure is that it is quick. The duration of the procedure varies according to the dispute resolution body to which the claimant has referred his case. Before the WIPO Arbitration and Mediation Center, the average duration of a procedure is approximately 60 days from the date of receipt of the complaint.
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How much does a UDRP procedure cost?
Before the WIPO Center, the amount of the fees to be paid depends on the number of domain names involved in the dispute and the number of experts chosen by the parties:
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Dispute involving 1 to 5 domain names, with 1 appointed expert: $1,500
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Dispute involving 1 to 5 domain names, with 3 appointed experts: $4,000
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Dispute involving 6 to 10 domain names, with 1 appointed expert: $2,000
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Dispute involving 6 to 10 domain names, with 3 appointed experts: $5,000
These amounts do not include fees due to a lawyer representing one of the parties in the UDRP proceedings.
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What are the advantages of using a lawyer?
The complainant and the holder of the disputed domain name are not obliged to retain the services of a lawyer to represent them during the proceedings.
However, calling on the services of a lawyer can have significant advantages:
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The UDRP procedure can be complex for a novice. Calling in a lawyer who is used to conducting proceedings can help to avoid mistakes.
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A lawyer will be able to present the arguments of either party in a clear and concise manner, increasing the chances of convincing the members of the Administrative Panel.
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A lawyer is used to reading and understanding court decisions. He will be able to refer to the many decisions handed down in this area to evaluate the chances of success of a UDRP procedure.
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A lawyer can usefully assist the respondent in taking legal action if the cAdministrative panel considers that the disputed domain name should be deleted or transferred.
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