Editing Uniform Domain-Name Dispute-Resolution Policy

{{Short description|Process of dispute resolution}}
The '''Uniform Domain-Name Dispute-Resolution Policy''' ('''UDRP''') is a process established by the [[ICANN|Internet Corporation for Assigned Names and Numbers (ICANN)]] for the resolution of disputes regarding the registration of internet [[domain names]]. The UDRP currently applies to all generic top level domains (.com, .net, .org, etc.), some country code [[top-level domain]]s, and to all new generic top-level domains (.xyz, .online, .top, etc.).

== Historical background ==
When ICANN was first set up, one of the core tasks assigned to it was "The Trademark Dilemma",<ref>{{cite web|url=https://www.icann.org/resources/unthemed-pages/white-paper-2012-02-25-en|via=[[ICANN.org]]|publisher=[[United States Department of Commerce]]|title=Management of Internet Names and Addresses}}</ref> the use of trade marks as domain names without the trademark owner's consent. By the late 1990s, such use was identified as problematic and likely to lead to consumers being misled. In the United Kingdom, the [[Court of Appeal of England and Wales|Court of Appeal]] described such domain names as "an instrument of fraud".<ref>British Telecommunications plc v One in a Million Ltd [1999] 1 WLR 903, [[Aldous LJ]] at 920.</ref>

One of the first steps was that Member States commissioned the United Nations [[World Intellectual Property Organization]] (WIPO) to produce a report on the tension between [[trademark]]s and [[domain name]]s. Published on 30 April 1999, the WIPO Report recommended the establishment of a "mandatory administrative procedure concerning '''abusive registrations'''",<ref>{{cite web|url=http://www.wipo.int/export/sites/www/amc/en/docs/report-final1.pdf|title=The Management of Internet Names and Addresses: Intellectual Property Issues, 30 April 1999.}}</ref> which would allow for a "neutral venue in the context of disputes that are often international in nature."  The procedure was not intended to deal with cases with competing rights, nor would it exclude the jurisdiction of the courts. It would, however, be mandatory in the sense that "each domain name application would, in the domain name agreement, be required to submit to the procedure if a claim was initiated against it by a third party.<ref>{{cite web|url=https://www.wipo.int/amc/en/processes/process1/report/finalreport.html|title=WIPO Internet Domain Name Process|website=www.wipo.int}}</ref> The WIPO Report also set out the current [[#Process|three-stage test]] of the UDRP.

At its meetings on August 25 and 26, 1999 in Santiago, Chile, the ICANN Board of Directors adopted the UDRP Policy,<ref name="ICANN">{{Cite web |title=Uniform Domain Name Dispute Resolution Policy |url=https://www.icann.org/resources/pages/policy-2012-02-25-en |website=ICANN}}</ref> based on the recommendations contained in the Report of the WIPO Internet Domain Name Process,<ref>{{Cite web |title=Final Report of the WIPO Internet Domain Name Process |url=https://www.wipo.int/export/sites/www/amc/en/docs/report-final1.pdf |website=WIPO}}</ref> as well as comments submitted by registrars and other interested parties.<ref>{{Cite web |title=WIPO Guide to the Uniform Domain Name Dispute Resolution Policy (UDRP) |url=https://www.wipo.int/amc/en/domains/guide/#b3 |website=WIPO}}</ref>

On October 24, 1999, the ICANN Board adopted a set of Rules for Uniform Domain Name Dispute Resolution Policy (the UDRP Rules<ref name="icann.org">{{Cite web |title=Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") |url=https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en |website=ICANN}}</ref>) setting out the procedures and other requirements for each stage of the dispute resolution administrative procedure. The procedure is administered by dispute resolution service providers accredited by ICANN.

Following adoption by ICANN, the UDRP was launched on 1 December 1999, and the first case determined under it by WIPO was ''World Wrestling Federation Entertainment, Inc v. Michael Bosman'', involving the domain name worldwrestlingfederation.com.<ref>[http://www.wipo.int/amc/en/domains/decisions/html/1999/d1999-0001.html WIPO Domain Name Decision: D1999-0001]. Wipo.int. Retrieved on 2014-04-28.</ref> Since then WIPO provides a globally-used Jurisprudential Overview to summarize case law on a range of common and important substantive and procedural issues under the UDRP.<ref name="WIPO Panel Overview">{{Cite web |date=2017 |title=WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Jurisprudential Overview 3.0") |url=https://www.wipo.int/amc/en/domains/search/overview3.0/}}</ref>

== Adoption ==
The policy has been adopted by all ICANN-accredited [[Domain name registrar|registrars]]. It has also been adopted by certain managers of [[Country code top-level domain|country-code top-level domains]] (e.g., .nu, .tv, .ws).

The policy is then applicable due to the contract between the registrar (or other registration authority in the case of a country-code top-level domain) and its customer (the domain-name holder or registrant). When a registrant chooses a domain name, the registrant must "represent and warrant", among other things, that registering the domain name "will not infringe upon or otherwise violate the rights of any third party", and agree to participate in an [[arbitration]]-like proceeding should any third party assert such a claim.<ref name="ICANN" />

The policy itself sets forth the terms and conditions in connection with a dispute between the registrant and any party (other than the registrar) over the registration and use of the Internet domain name registered by the registrant.<ref name="ICANN" />

In case of a dispute, the complainant shall select one of the administrative-dispute-resolution service providers from among those approved by ICANN by submitting the complaint to that Provider. The selected Provider will administer the proceeding. Proceedings under this Policy will be conducted according to the Rules for Uniform Domain Name Dispute Resolution Policy,<ref name="icann.org" /> as well as the selected administrative-dispute-resolution service provider's supplemental rules.<ref>{{Cite web |title=List of Approved Dispute Resolution Service Providers and supplemental rules |url=https://www.icann.org/resources/pages/providers-6d-2012-02-25-en |website=ICANN}}</ref>

Providers of the UDRP are:
* The Arab Center for Dispute Resolution (ACDR)<ref>{{cite web|url=http://acdr.aipmas.org/default.aspx?lang=en|title=Arab Center for Dispute Resolution(ACDR)|website=acdr.aipmas.org}}</ref>
* The Asian Domain Name Dispute Resolution Centre (ADNDRC)<ref>{{Cite web |title=Asian Domain Name Dispute Resolution Centre |url=https://www.adndrc.org}}</ref>
* Canadian International Internet Dispute Resolution Centre (CIIDRC)<ref>{{Cite web |title=Canadian International Internet Dispute Resolution Center |url=http://www.ciidrc.org}}</ref>
* Czech Arbitration Court, Arbitration Center for Internet Disputes<ref>http://www.adr.eu/index.php(CAC) {{dead link|date=February 2022}}</ref>
* [[Forum (alternative dispute resolution)|National Arbitration Forum]] (NAF)<ref>{{cite web|url=http://www.adrforum.com/mobile|title=Alternative Dispute Resolution – ADR Forum|website=www.adrforum.com}}</ref>
* [[World Intellectual Property Organization]] (WIPO)<ref>{{cite web |title=WIPO Portal page |url=https://www.wipo.int/portal/en/index.html |website=[[WIPO]]}}</ref>

== Process ==
A complainant in a UDRP proceeding must establish three elements to succeed:
* The domain name is identical or confusingly similar to a [[trademark]] or [[service mark]] in which the complainant has rights;
* The registrant does not have any rights or legitimate interests in the domain name; and
* The domain name has been registered and the domain name is being used in "[[bad faith]]".

In a UDRP proceeding, a panel will consider several non-exclusive factors to assess bad faith, such as:
* Whether the registrant registered the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark;
* Whether the registrant registered the domain name to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, if the domain name owner has engaged in a pattern of such conduct; and
* Whether the registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or
* Whether by using the domain name, the registrant has intentionally attempted to attract, for commercial gain, internet users to the registrant's website, by creating a likelihood of confusion with the complainant's mark.

The goal of the UDRP is to create a streamlined process for resolving such disputes. It was envisioned that this process would be quicker and less expensive than a standard legal challenge in a national or foreign court. In addition, the procedures are more informal than litigation and the decision-makers are experts in such areas as international trademark law, domain name issues, electronic commerce, the Internet and dispute resolution. It is also international in scope: it provides a single mechanism for resolving a domain name dispute regardless of where the registrar or the domain name holder or the complainant are located.

In order to file a UDRP complaint with a UDRP provider, the costs often start around [[United States dollar|US$]]1,000 to $2,000.<ref>{{Citation
 | title = InterNIC &#124; FAQs on the UDRP
 | url = http://www.internic.net/faqs/udrp.html
 | access-date = 2009-10-09
}}</ref> The costs of the case will depend on the number of domain names involved and whether the case is decided by a single or by 3 panelists. For example, a case handled by the WIPO Arbitration and Mediation Center, involving between 6 and 10 domain names and decided by 3 panelists would cost [[United States dollar|US$]] 5,000.<ref>{{Cite web |title=WIPO Guide to the Uniform Domain Name Dispute Resolution Policy |url=https://www.wipo.int/amc/en/domains/guide/#b3 |website=WIPO}}</ref> Those fees do not include any payment that might have to be made to a lawyer representing a party in the administrative proceeding. Fees are available in Providers supplemental rules.<ref>{{Cite web |title=CAC's UDRP Supplemental Rules of the Czech Arbitration Court |url=https://udrp.adr.eu/arbitration_platform/udrp_supplemental_rules.php#12 |website=UDRP}}</ref> In order to assist parties in filing their pleadings, WIPO provides a guide of case law called the WIPO Overview; this resource summarizes almost 1,000 UDRP decisions from hundreds of expert panelists.<ref name="WIPO Panel Overview" />

If a party loses a UDRP proceeding, in many jurisdictions they may still bring a lawsuit against the domain name registrant under local law. For example, the administrative panel's UDRP decision can be challenged and in effect “overturned” in a U.S. court of law by means of e.g. the [[Anticybersquatting Consumer Protection Act]]. If a domain name registrant loses a UDRP proceeding, they can file a lawsuit against the trademark holder within ten business days to prevent a registrar from transferring the domain name in the relevant jurisdiction (either the location of the registrar's principal office or the registrant's location).<ref name="ICANN" /><ref>{{cite web|url=http://www.cybersquatting.com|title=An Informational Website About Cybersquatting Law}}</ref>

== Examples ==
The UDRP process has been used in a number of well-known cases.

In the ''Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com"'' case (2000), the panel found against the defendant registrant based on all three of the above factors and ordered the domain name turned over to [[Madonna]].<ref>{{cite web|url=https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0847.html|title=WIPO Administrative Panel Decision: D2000-0847, Madonna Ciccone, p/k/a Madonna v. Dan Parisi and "Madonna.com"|website=www.wipo.int |date=October 12, 2000}}</ref> On the other hand, in the ''[[Gordon Sumner p/k/a Sting v Michael Urvan]]'' on the same year, American gamer Michael Urvan retained the right to domain name "sting.com" against the complaint of [[Sting (musician)|Sting]], since the panel found that 'sting' was a common dictionary word, it was not registered as a trademark, and that Urvan was using the name in [[good faith]] rather than holding it to ransom.<ref name="sting">{{cite news | publisher=ICANN | title=WIPO Administrative Panel Decision: d2000-0596, Gordon Sumner p/k/a Sting v Michael Urvan | url=https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0596.html |date=July 20, 2000 }}</ref>

In the ''Wal-Mart Stores, Inc. v. Richard MacLeod d/b/a For Sale'' case (2000),<ref>{{cite web|url=https://www.wipo.int/amc/en/domains/decisions/html/2000/d2000-0662.html|title=WIPO Administrative Panel Decision: D2000-0662|website=www.wipo.int}}</ref> the decision describes the practice of [[cybersquatting]]. The UDRP was adopted to prevent such behavior where a domain name registrant tries to extort money from trademark owners. In this case, the expert found that the evidence showed the registrant was not using the domain name “wal-martsucks.com” for a criticism site but instead try to get a payout from [[Walmart]].

The ''Oki Data Americas, Inc. v. ASD, Inc.'' case (2001)<ref>{{cite web|url=https://www.wipo.int/amc/en/domains/decisions/html/2001/d2001-0903.html|title=WIPO Administrative Panel Decision: D2001-0903|website=www.wipo.int}}</ref> is one of the most cited<ref>{{Cite web |title=25 Most Cited Decisions in Complaint |url=https://www.wipo.int/amc/en/domains/statistics/cases_cited.jsp?party=C |website=[[WIPO]]}}</ref> "[[fair use]]" decisions under the UDRP, it raises the question of whether an authorized (and non-authorized) sales or service agent of trademarked goods can use the trademark in a domain name.

''The Commissioners for HM Revenue and Customs v. Adil Khasanov'' case (2020)<ref>{{cite web|url=https://www.wipo.int/amc/en/domains/decisions/text/2020/d2020-1074.html|title=WIPO Administrative Panel Decision: D2020-1074|website=www.wipo.int}}</ref> provides an example of the impact of the [[Covid-19]] crisis in the [[Domain Name System]], and the increasing number of fraudulent domain name registrations.

== Domain name disputes under new generic top-level domains ==
In 2012, ICANN launched a process to create [[.events|new generic top-level domains]] (gTLDs). Over 1,900 applications were made.<ref>{{Cite web |title=New Generic Top-Level Domain Program History |url=https://newgtlds.icann.org/en/about/program |website=ICANN}}</ref> As part of the expansion of the domain name system, ICANN introduced a number of new brand protection mechanisms. Opinions differ as to whether or not these new processes will be effective. Industry commentators predict that the UDRP will continue to be used, and that there will be a "substantial increase in [[cybersquatting]]".<ref>{{cite web|website=Bloomberg BNA|title=Cyberlaw Predictions 2013|first=Thomas|last=O'Toole|date=January 2, 2013|url=http://www.bna.com/cyberlaw-predictions-2013-b17179871639/|archive-url=https://web.archive.org/web/20130605073518/http://www.bna.com/cyberlaw-predictions-2013-b17179871639/|archive-date=2013-06-05}}</ref> Evidence from previous expansions of the namespace, however, indicates the continued dominance of .com both in size and as the first-choice domain for cybersquatting (based on number of disputes).<ref>{{cite web|quote=Previous expansions of the namespace have failed to capture the public imagination or to pose a competitive threat to the gorilla in the market, .com. According to WIPO, of 42,000 UDRP filings to date, 80% were for .com domains, and of the new gTLDs, only .info has attracted any volume of UDRP disputes (3% of cases filed)|url=http://www.emilytaylor.eu/2013/01/online-brand-protection-what-to-expect.html|website=Emily Taylor — Internet Law and Governance|title=Online brand protection, what to expect in 2013|date=January 4, 2013|archive-url=https://web.archive.org/web/20130108093055/http://www.emilytaylor.eu/2013/01/online-brand-protection-what-to-expect.html|archive-date=2013-01-08}}</ref>

The WIPO Arbitration and Mediation Center was appointed by ICANN as the exclusive provider of dispute resolution services for trademark based "pre-delegation" Legal Rights Objections (LRO) under ICANN New gTLD Program.<ref>{{Cite web |title=Legal Rights Objections under ICANN's New gTLD Program |url=https://www.wipo.int/amc/en/domains/lro/ |website=[[WIPO]]}}</ref> The WIPO Center 2013 Report provides a resume and analysis in relation to the Legal Rights Objection (LRO) procedure where trademark owners could object to a new gTLD application they worried might infringe their rights.<ref>{{Cite web |date=2013 |title=WIPO Arbitration and Mediation Center End Report on Legal Rights Objection Procedure 2013 |url=https://www.wipo.int/export/sites/www/amc/en/docs/lroreport.pdf}}</ref>

== See also ==
* [[Cybersquatting]]
* [[Domain Name System|DNS]]
* [[Top-level domain]]
* [[Typosquatting]]
* [[Reverse domain hijacking]]
* [[Uniform Resource Locator|URL]]

== References ==
{{Reflist}}

== External links ==
* [http://www.icann.org/udrp/proceedings-list-name.htm All cases by name, at ICANN site]
* [http://www.icann.org/udrp/proceedings-list.htm All cases by date, at ICANN site]
* [http://www.internetlibrary.com/topics/domain_name.cfm Internet Library of Law and Court Decisions] Analysis of over 80 Court Decisions and UDRP Proceedings Resolving Domain Name Disputes
* [https://www.eudrp.com/ Uniform Domain Name Resolution Policy decisions EUDRP]
* [http://arbiter.wipo.int/domains/decisions/ Cases decided through WIPO (searchable)]

{{Trademark law}}
{{Domain parking}}

[[Category:Internet governance]]
[[Category:Domain Name System]]
[[Category:Arbitration]]