Uniform Domain Name Dispute Resolution

Trademark Law

Table of Content

Binding out-of-court dispute resolution in domain conflicts (Uniform Domain Name Dispute Resolution Policy (UDRP))

The UDRP procedure enables a domain that is misusing a trademark to be deleted or transferred quickly and easily. The process can be used for .com, .org, .net, .ch and many other domains.

On domain marketplaces like SEDO, it is the order of the day that domains are sold for over 100,000 CHF / EUR / USD. For example, the domain kik.de was sold to KiK Textilien GmbH from Bönen without attempting a previous domain arbitration procedure.

Ultimately, however, the domain name does not belong to the person who registered the domain first but to the person who owns the brand or name. Even if a domain grabber has already registered their company name or brand name, it does not mean that excessive purchase prices have to be paid for a domain name.

National proceedings against the domain grabber are often complex and expensive. The domain grabber may be based abroad or be difficult to identify by anonymization service providers.

The Internet Corporation for Assigned Names and Numbers (ICANN) has given the relevant NICs (Network Information Centers) domain registration authorities (the authority to delete or transfer domains in the event of trademark infringements).

Alternative dispute settlement procedures for domain names are a better alternative to national court procedures. Alternative dispute settlement procedures usually only take a few weeks to reach a decision, produce the desired result of the transfer, or blocking of the domain grabber domain and are inexpensive.

Overview of the most common Domain Name Dispute Resolution procedures and Domain Name Resolution Services (DNDR procedures):

  • The Uniform Domain Name Dispute Resolution Policy (UDRP) is a procedure of the “WIPO Arbitration and Mediation” of WIPO Switzerland in Bern. It is best known for the dispute settlement procedures. It is used on a wide variety of domains and is a “real” dispute resolution process that often results in a domain transfer.
  • The Alternative Dispute Resolution (ADR) is the procedure of the Czech Arbitration Court (CAC) in Prague. The ADR procedure is based on Regulation (EC) No. 874/2004 as EU and national law, which is underpinned by the national law.
  • The Uniform Rapid Suspension System (URS). Applicable for over 1200 new top-level domains. With URS, a result can be achieved in just a few days for a few hundred USD / CHF.
  • The TMCH DRP as part of a Trademark Clearinghouse Dispute Resolution Procedure.

Country Code (ccTLDs) and Generic Top Level Domains (gTLDs) for the UDRP procedure

There are 2 different types of Top Level Domains, the ccTLDs and gTLDs:

  • Country Code Top Level Domains (ccTLDs) such as .ch swiss are assigned to individual countries. The ccTLDs are administered by national organizations or their representatives. Some ccTLDs like .de do not take part in arbitration proceedings.
  • Generic top level domains (gTLDs) are administered by private individuals. A distinction can be made between sponsored TLDs such as Afilias Limited (for .info) and unsponsored TLDs VeriSign (for .com, .net, .cc, .name, .tv) or Public Interest Registry (for .org) with different private administrators.. Almost all gTLDs take part in dispute settlement procedures.

The various countries or private individuals have outsourced the arbitration procedure to so-called “Domain Name Resolution Centers”, which can make binding decisions about domains.

A significant advantage of the ADR proceedings is that the respective duration of the proceedings is comparatively short, and they grant the rights holder not only the right to cease and desist in cases of trademark infringement under German law but rather a right to transfer. You can actually “sue” a domain with it.

The prerequisites that must be proven by the complainant in the procedure differ depending on the applicable set of rules.

As a rule, however, it is required that the complainant has rights to a character that is similar to the domain name, that the respondent himself has no right to register and/or use the domain name and that the registration and/or use of the domain name is carried out in bad faith.

Domain Resolution Center with for the UDRP procedure:

(Source: List of Domain Name Resolution Providers).

Often several different procedures are possible via different ADR providers. We are looking for the best solution to your problem.

ccTLDs Top Level Domains with UDRP Domain Dispute Resolution procedure:

  • chTLD liTLD Uniform Domain Name Dispute Resolution Policy (UDRP) Switzerland and Liechtenstein and many others via UDRP / WIPO such as .AG (Antigua and Barbuda); .AI (Anguilla) ;. AS (American Samoa); .BM (Bermuda), .BS (Bahamas), .BZ (Belize), .CC (Coconut Islands) .CD (Democratic Republic of the Congo), .CO (Colombia), .CY (Cyprus), .DJ (Djibouti),. EC (Ecuador), .FJ (Fiji), .FM (Federated States of Micronesia), .GD (Grenada), .GT (Guatemala), .KI (Kiribati), .LA (Laos People’s Democratic Republic), .LC (St . Lucia), .MD (Republic of Moldova), .ME (Montenegro), .MW (Malawi), .NR (Nauru), .NU (Niue), .PA (Panama), .PK (Pakistan), .PN ( Pitcairn Islands), .PR (Puerto Rico), .PW (Palau), .RO (Romania), .SC (Seychelles), .SL (Sierra Leone), .SO (Somalia), .TJ (Tajikistan),. TT (Trinidad and Tobago), .TV (Tuvalu), .UG (Uganda), .VE (Venezuela), .VG (British Virgin Islands) and .WS (Samoa)
  • Dispute Resolution Service Policy for .uk (DRS Policy) United Kingdom
  • usTLD Dispute Resolution Policy (usDRP) USA
  • With the regulation VO (EG) No. 874/2004 (ADR procedure for “.eu”) European Union EEA, the ADR procedure was implemented in EU law. The Czech Arbitration Court (CAC) of the Czech Chamber of Commerce is responsible for this.
  • IN Domain Name Dispute Resolution Policy (INDRP) India
  • UAE Domain Name Dispute Resolution Policy (.ae) Arab Emirates
  • Domain Name Dispute Resolution Policy for ccTLD .pe Peru Red Científica Peruana
  • Singapore Domain Name Dispute Resolution Policy (SDRP)
  • CentralNic Dispute Resolution Policy (CentralNic DRP)
  • Alternative Dispute Resolution Policy for domain names in the top-level domain .se Internet Foundation in Sweden
  • CNNIC ccTLD Dispute Resolution Policy (.cn) China Internet Network Information Center.
  • Regulation of the AFNIC dispute resolution system (.fr) AFNIC
  • Regulation of the Administrative System of Internet Conflicts Relating to Domain Names Under “.br” – Saci-Adm Brazilian Network Information Center (previous Brazilian Internet Steering Committee)
  • Dispute Resolution Regulations for. nl Domain Names Centrum Wiskunde & Informatica

Generic-Top-Level-Domains (gTLDs) for the UDRP procedure:

  • Uniform Domain Name Dispute Resolution Policy (UDRP) for the following gTLDs: .aero, .asia, .biz, .cat, .com , .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel and .travel
  • Charter Eligibility Dispute Resolution Policy (CEDRP) valid for the following TLDs .aero,. coop, .museum, and .travel for complaints about the special registration conditions for these gTLDs.

A complete overview of which domain dispute provider is responsible for which domain can be found directly on the WIPO website.

The URS procedure is also offered for practically all 1200 new domains.

The most common wrongful acts that result in Domain Name Disputes:

When cybersquatting (also known as domain squatting), someone registers, trades, or uses an Internet domain name with bad faith in order to benefit from someone else’s brand reputation.

The cybersquatter then offers to sell the domain at an inflated price to the person or company that owns a trademark contained in the domain name.

The term is derived from “occupying,” meaning the occupation of an abandoned or unoccupied room or building that the occupant does not own, rent, or otherwise authorized to use.

Brandjacking is an activity in which someone impersonates another company online in order to exploit that person or company’s brand equity. While brandjacking is similar to cybersquatting, identity theft, or phishing in nature and possible tactics, brandjacking is usually specific to a politician, celebrity, or corporation and is more indirect in nature.

A Brandjacker may attempt to exploit their target’s reputation for selfish reasons or attempt to damage their target’s reputation for hostile, malicious, or political or campaign-related reasons. These reasons may not be directly financial, but the repercussions on the original trademark owner can often include financial losses.

In brandjacking, the perpetrator imitates a star’s social media account or domain, for example, and tweets messages that do not come from this star. For example, negative publicity can result in the termination of a celebrity’s sponsorship contract or potentially lost sales for a company, or a reduced share price.

Domain Running Front running is the practice of a domain name registrar using inside information to register domains with a view to reselling them or generating revenue from ads on the domain’s landing page.

By registering the domains, the registrar prevents other potential registrars from selling the domain to a customer. The registrar usually uses the five-day test phase “Domain Tasting,” in which the domain can be blocked without payment.

Typosquatting or typo abuse, also known as URL hijacking, sting site, or fake URL, is a form of cybersquatting and possibly brandjacking based on mistakes such as typographical errors made by internet users entering a website address into a web browser. Should a user accidentally enter the wrong website address, they could be directed to any URL (including an alternate website owned by a cybersquatter).

Reverse Domain Name Hijacking (also known as Reverse Cybersquatting or commonly abbreviated as “RDNH”) occurs when a legitimate trademark owner attempts to secure a domain name by making cybersquatting claims against the “cybersquatter” owner of a domain name.

This often intimidates domain owners into transferring ownership of their domain names to trademark owners in order to avoid legal action, especially if the domain names belong to smaller organizations or individuals.

Reverse domain name hijacking is most commonly done by larger corporations and famous people to defend their legitimate trademark or prevent defamation. Tracking of RDNH cases at https://www.rdnh.com/

Tm.legal specializes in ADR procedures and, in addition to ADR procedures for Swiss and Liechtenstein domains, can also help you with all other domains for which an ADR procedure exists.

Requirements of the DNDR procedure (also UDRP):

In order to enforce a deletion, blocking, or transfer of a domain, the following “abusive registration” facts presented by the complainant:

  • must be registered domain and must be identical or similar to the brand or the products/services
  • Complainant, the domain owner (domain name registrant) itself has no rights to the domain
  • Name, the domain name in bad faith used

the domain owner, however, has a legitimate interest (legitimate interests) in the domain if it is:

  • use the domain name as part of a bona fide offer proven or demonstrably prepared for such use before he received the complainant’s notification
  • he has a well-known trademark or is known as a person (company, organization) under the domain name; even if he has no registered trademarks
  • used the domain privately and without profit and no ver misleads the consumer and does not disparage the respondent’s trademark

A bad faith registration (bad faith) can be assumed if:

  • the domain owner has acquired the domain in order to sell it on to the rightful owner of the name for a higher price (domain grabbing)
  • the domain owner tries to disrupt the business of the brand
  • owner exploits a mix-up with the domain of the brand owner to redirect users to his offers

(source: https://www.wipo.int/amc/en/domains/guide/)

Some domains or arbitration procedures still have special rules (supplemental rules) that relate to special admission restrictions for domain owners or the complaint process. For all details, please read the relevant documents at WIPO or Regulation (EC) No. 874/2004.

Procedure and content of the domain dispute procedure

Content of the domain dispute

The alternative dispute resolution procedure (UDRP, URS, or ADR) is an administrative procedure (“standards”) that does not require an arbitration agreement between the parties involved. Only the alternative dispute settlement procedure according to § 22 of Regulation (EC) No. 874/2004 for the introduction of the top-level domain .eu carries out the legal provisions in the form of an ordinance.

According to the UDRP arbitration tribunals’ case law, when examining the likelihood of confusion between a domain name and a trademark within the meaning of Section 4 (a) (i) of the UDRP, a comparison of the characters is based solely on the comparison. The goods or services for which the complainant’s trademark is registered or used does not matter in this context.

The complainant (trademark owner) must demonstrate that the domain name owner has no rights or legitimate interests in a domain name. It is then up to the respondent to explain circumstances from which his rights or legitimate interests in the domain name follow. (Source: https://www.wipo.int/amc/en/domains/guide/).

The domain resolution providers seem to have a bias in favor of the trademark owner or complainant and often decide in favor of the trademark owner and make the “commercial use” of the Internet difficult for domain brokers and domain grabbers (source: https://cardozojcr.com/issues/volume-3-1/note/).

The .eu domains are an exception. The European ccTLD “.eu” domains are subject to Regulation (EC) No. 874/2004 laying down general rules for the implementation and functions of the top-level domain “.eu” and of the general basic rules for registration “for domain names.

The regulations in Art. 21 of Regulation (EC) No. 874/2004 can also be applied as European law by the national courts. This is original domain law. The rest of the ADR – A domain owner usually submits to the procedure in the registration contract. For .eu this is but also original EU law.

Dispute Social Media Account

Of course, cybersquatting from social media accounts can also be dealt with. This can be the case, for example, if someone abuses your brand on Facebook, Twitter, Linkedin, Amazon, or Alibaba and abuses an account under your brand name.

In this case, the fraudulently managed account’s claim must be proven to the social media provider. Many social media providers have special procedures for this. Dispute procedures also exist for eBay, Amazon, Google, and other platforms.

Aims of the Domain Name Dispute Procedure

In addition to the ADR procedure, the Uniform Rapid Suspension System (URS) procedure is for suspending the domain. The domain can be blocked here.

A dispute entry can prevent the domain from being transferred to third parties. The procedures are primarily suitable for clear trademark infringements in which the domain owner apparently has no right to the domain.

Our Dispute Resolution Service offers

We support you in the implementation of ADR procedures:

  • Research in the extensive databases with over 40,000 procedures when the UDRP came into force on December 1st, 1999
  • Block websites using the URS procedure
  • Representation in out-of-court dispute settlement procedures (UDRP, URS, alternative dispute settlement for .EU etc.)
  • Online Brand Monitoring at all common trademark offices and databases such as IGE, EUIPO, WIPO
  • Real-time online domain monitoring to immediately recognize dangers from newly registered domains (via domaintools.com). Both trademark law and security aspects (recognizing domains for phishing in real-time) can be taken into account here.
  • Requesting dispute entries
  • Action against unauthorized dispute entries
  • Advice on buying domain names
  • (anonymous) purchase of domain names
  • Domain contract law
  • License contracts
  • Trademark protection
  • Brand defense
  • Action against brand abuse, also at Amazon, Google or Customs
  • As a special offer, we carry out a brand audit in which we examine your brand strategy and identify any gaps.

Further legal enforcement: https://pages.ebay.de/vero/

In the corporate group, we handle up to 1000 proceedings per month and have a network of partner lawyers in many countries.

Use the free initial consultation to have your case assessed.

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