Rollingsons' client was recently awarded a successful decision in a domain name dispute. The dispute was decided under the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP has been created by WIPO (the World Intellectual Property Organisation) to set out a legal framework for the resolution of disputes between a domain name registrant and a third party over the abusive registration and use of a domain name.
What then actually amounts to abusive registration? According to the WIPO guidelines there are three criteria used to determine an abusive registration:
(i) the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and
(ii) the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
(iii) the domain name has been registered and is being used in bad faith
The UDRP is a relatively cheap, quick and effective tool which can be used to combat "domain name squatting". If a person or company discovers that it may be the victim of an abusive registration then the next step is to file a complaint under the UDRP Administrative Procedure. There are five stages in the WIPO procedure:
(1) The filing of a Complaint with an ICANN-accredited ( Internet Corporation for Assigned Names and Numbers) dispute resolution service provider chosen by the Complainant, such as the WIPO Center;
(2) The filing of a Response by the person or entity against whom the Complaint was made;
(3) The appointment by the chosen dispute resolution service provider of an Administrative Panel of one or three persons who will decide the dispute;
(4) The issuance of the Administrative Panel's decision and the notification of all relevant parties; and
(5) The implementation of the A decision by the domain name registrar. Where the Complaint has been successful, this will usually involve the transfer of the domain name to the Complainant.
The simplicity of the WIPO procedure certainly has its advantages over going to court. It is less formal than litigation making it both faster and cheaper while panellists are experts in resolving disputes in this area of law. Importantly, the resolution process is also internationally recognised.
Notwithstanding this, we would always recommend seeking advice from a qualified lawyer in any dispute over intellectual property. Rollingsons has experience in both the WIPO process and formal legal proceedings, so, if you are considering disputing a domain name, have received a complaint or would like more information please contact James Crighton via e-mail or by phone on 020 7611 4848.
