What is the UDRP (Uniform Domain-Name Dispute-Res­ol­u­tion Policy)?

The Uniform Domain-Name Dispute-Res­ol­u­tion Policy (UDRP) is an ar­bit­ra­tion guideline in­tro­duced in 1999 to resolve domain name disputes. Various re­quire­ments must be met in order to use the out-of-court procedure.

What does UDRP stand for and what is its purpose?

UDRP is an ab­bre­vi­ation for ‘Uniform Domain-Name Dispute-Res­ol­u­tion Policy’, which is an in­ter­na­tion­al ar­bit­ra­tion procedure for the res­ol­u­tion of disputes in con­nec­tion with domain names. It was developed by ICANN (Internet Cor­por­a­tion for Assigned Names and Numbers) and in­tro­duced in 1999 to provide trademark owners with a quick and cost-effective way to take action against abusive domain re­gis­tra­tions, in par­tic­u­lar cy­ber­squat­ting. The UDRP procedure allows com­plain­ants to request an ex­traju­di­cial decision on the transfer or deletion of a domain.

The UDRP generally applies to generic top-level domains (gTLDs) such as .com, .biz, .info, .net or .org. In addition, registry ad­min­is­trat­ors of numerous country-specific top-level domains (ccTLDs) have also adopted the directive (sometimes with or without modi­fic­a­tions). These include .ag (Antigua and Barbuda), .es (Spain), .mx (Mexico), .tk (Tokelau) and many more.

Why was the UDRP developed?

With the growth of the internet, or World Wide Web, and the in­creas­ing im­port­ance of trademark rights, the number of abusively re­gistered domains also increased. Par­tic­u­larly prob­lem­at­ic was the afore­men­tioned cy­ber­squat­ting, in which third parties register web addresses with well-known brand names in order to resell them for profit or damage the brand’s repu­ta­tion.

Before the in­tro­duc­tion of the UDRP, there was no uniform system for resolving such disputes. Trademark owners had to go through lengthy and expensive court pro­ceed­ings to enforce their rights. The UDRP was developed to provide a quick, in­ter­na­tion­al and cost-effective solution for these types of conflicts.

What re­quire­ments must be met for UDRP?

To suc­cess­fully file a UDRP complaint, com­plain­ants must demon­strate the following three points:

1. Section 4(a)(i) of the UDRP: The domain is identical or con­fus­ingly similar to a re­gistered trademark to which the com­plain­ant has rights.
2. Section 4(a)(ii) of the UDRP: The current domain owner has no le­git­im­ate interest in the domain (e.g., because they are not using the trademark lawfully or have no con­nec­tion with the trademark).
3. Section 4(a)(iii) of the UDRP: The domain was/is re­gistered and used with malicious intent (e.g., to profit from the trademark’s repu­ta­tion or to extort the trademark owner).

ICANN-ac­cred­ited ar­bit­ra­tion bodies provide ad­min­is­trat­ive support and ensure that pro­ceed­ings are conducted in ac­cord­ance with UDRP guidelines. Currently, the following five in­sti­tu­tions are au­thor­ised to conduct UDRP pro­ceed­ings:

• WIPO (World In­tel­lec­tu­al Property Or­gan­iz­a­tion): One of the most well-known ar­bit­ra­tion bodies con­duct­ing UDRP pro­ceed­ings worldwide; es­tab­lished team of experts spe­cial­ising in in­tel­lec­tu­al property pro­tec­tion
• FORUM (National Ar­bit­ra­tion Forum): A US-based ar­bit­ra­tion body that’s par­tic­u­larly popular with North American companies
• ADNDRC (Asian Domain Name Dispute Res­ol­u­tion Centre): Re­spons­ible for UDRP pro­ceed­ings with a focus on the Asian region
• CIIDRC (Canadian In­ter­na­tion­al Internet Dispute Res­ol­u­tion Centre): A re­l­at­ively new ar­bit­ra­tion board in Canada, au­thor­ised in 2019, offering its services in English and French
• CAC (Czech Ar­bit­ra­tion Court): In­sti­tu­tion in the Czech Republic that offers UDRP pro­ced­ures at a very low cost and is known for efficient pro­cessing

How does a UDRP procedure work?

Compared to legal pro­ceed­ings before UK courts or in­ter­na­tion­al tribunals, the UDRP procedure is a sig­ni­fic­antly faster al­tern­at­ive. One of its major ad­vant­ages is its speed — the entire process is typically completed within less than two months. Here is how the procedure generally works:

In short, the com­plain­ant files a complaint with one of the re­cog­nised ar­bit­ra­tion bodies such as WIPO, which reviews and refers the case. The domain owner has up to 20 days to respond. An ar­bit­ra­tion panel then examines the complaint based on UDRP criteria. The panel issues a decision within ap­prox­im­ately 60 days. Both parties then have the op­por­tun­ity to consult a regular court within ten days to have this decision reviewed. If no appeal is made, the ar­bit­ra­tion panel’s decision is im­ple­men­ted, which usually means the transfer or deletion of the affected domain names.

UDRP practical examples

A prominent example of a company that has utilised the UDRP procedure is Bayer AG. Between December 12, 2022, and January 19, 2023, the phar­ma­ceut­ic­al company filed six pro­ceed­ings before WIPO against a total of ten re­gistered domain names that infringed its trademark rights. Some of these domains, such as bayerr.com and bayer-cz.com, were used for fraud­u­lent emails. In all cases, WIPO ruled in favour of Bayer AG and ordered the transfer of the domains.

The 2000 case of Sting v. Michael Urvan demon­strates that not all com­plaints from celebrit­ies or trademark owners are suc­cess­ful. Musician Sting filed a complaint against Michael Urvan, who had re­gistered the domain sting.com. Urvan, an American gamer, used the name ‘Sting’ as a pseudonym for his online activ­it­ies and had already re­gistered the domain five years earlier. The ar­bit­ra­tion panel ruled in favour of Urvan, because, first of all, ‘Sting’ is a generic word and, second of all, Urvan used the domain in good faith for his own purposes.