Guidance note for the UDRP process

14 May, 2018
by: Cripps Pemberton Greenish

The recovery of a domain name can be sought without the need to issue proceedings, through the Uniform Domain Name Dispute Resolution Policy (the UDRP).

This guidance note explains how a UDRP panel has the power to cancel or transfer a domain name back to the rightful owner without any need for court proceedings.

The UDRP Process 

Set out below are the key steps in the UDRP process and commentary on how we can offer support and assistance at each stage.

The first stage in the recovery process is to send a Letter before Action to the cybersquatter, setting out a claim to prior rights in the domain name. The letter will demand a cessation of use and a transfer of ownership of the domain.  

How Cripps Pemberton Greenish can help

We can:

  • assist in the collation and presentation of important evidence of prior rights in the name;
  • draft and send the Letter before Action; and
  • provide advice on the response received.

 

If the Letter before Action does not secure a transfer of the domain name, the next step to consider is filing a complaint under the UDRP with one of 4 main domain name registration bodies.

To be successful, a complainant will have to prove to the UDRP panel the following:

  • The domain name is identical or confusingly similar to a trade mark used by the business;
  • The registrant has no legitimate rights or interests in the disputed domain name; and
  • The disputed domain was registered in bad faith.

The above is a much simplified version of the actual criteria to be met. Within the UDRP rules, the above stages are more detailed than is practical to set out in this note. A systematic approach therefore needs to be taken when filing a complaint, with careful consideration given to both the legal arguments and evidence filed in support.

How Cripps Pemberton Greenish can help

We can:

  • consider the facts and advise on the merits of the case;
  • draft, finalise and file a Complaint submission document to start the process;
  • assist in the drafting of the detailed supporting witness statements and the preparation of evidence;
  • liaise with the UDRP tribunal on behalf of the complainant, advising on the process and any additional documents requested;
  • address any arguments raised in response by the cybersquatter; and
  • advise on the final decision made by the UDRP, answering any enforcement queries.

Each case will turn on its facts and so it is not possible to guarantee success in each case. However, a successful result under the UDRP process will result in either a cancellation of the domain name or a transfer of the domain to the complainant.

If you require further guidance please contact the commercial disputes team.