Domain Names

Domain Name Dispute Services – auDRP and UDRP Proceedings

 

Clarifis IP are experts in the field of domain name dispute resolution. Very few Intellectual Property or Law Firms are well versed in the specificity of domain name disputes as they are conducted in the context of Australian, New Zealand and other International Domain Names.

The Universal Dispute Resolution Procedure (UDRP) and the auDRP (Australian Dispute Resolution Procedure) are both binding, alternate dispute resolution avenues which trade marks rights holders ought to consider as opposed to litigation, in the following circumstances:

  1. Where the costs associated with legal action through the courts may be unjustifiable;
  2. Where there is a clear-cut instance of the domain registrant acting in a way which is contrary to the grounds of complaint under the ADR methods (ie. the registrant has no legitimate rights in respect of the trade mark);
  3. Where no loss or no substantial loss has been incurred by the rights holder or where the rights holder does not wish to seek damages through the courts;
  4. Where the registrant is located abroad and complexities relating to jurisdictional issues and jurisdictional coverage of trade mark registrations may result;
  5. Where prompt and effective dispute resolution is desired with a high prospect of success.

 

Generally, a rights holder may pursue a UDRP or auDRP Complaint under the following circumstances:

  1. Where the domain name in question contains the exact trade mark or a very close representation of the trade mark;
  2. Where the domain name is not generic;
  3. Where the domain name is a typographical variation of the correct spelling of the trade mark (ie. eebay.com instead of ebay.com)
  4. Where the domain name has irrelevant additions to the mark added for no justifiable reason (ie. Telstraservices.com)

There are some circumstances in which the alternate dispute resolution procedures under the domain name registration agreements are not appropriate and it is prudent to seek advice from a qualified professional before making demands – often it can be cheaper to pay for the domain name should the costs of acquisition from the unauthorised registrant be cheaper than filing a dispute.

What elements of a complaint must be satisfied to be successful in a UDRP or auDRP Proceeding?

 

The grounds for making a complaint under the UDRP are relatively straightforward however satisfying each of the elements can be challenging for some applicants, particularly where the matter is not a clear-cut instance of cybersquatting – accordingly, complainants must satisfy the following:

  1. That the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
  2. That the registrant has no rights or legitimate interests in respect of the domain name; and
  3. The domain name has been registered by the registrant and is being used in bad faith.

In the case of an auDRP Complaint, the grounds are very similar to those of the UDRP.

What outcomes available through the UDRP or auDRP?

 

The only outcomes resulting from a UDRP or auDRP proceeding are limited to:

  1. Having the domain name transferred to the complainant; or
  2. Having the domain name cancelled.

No award of damages, costs or any other form of injunctive relief is offered and proceedings in a court would be required to exercise a claim to these forms of relief.

How do you file a UDRP Complaint?

A UDRP Complaint must be filed in accordance with the Rules for Uniform Domain Name Dispute Resolution Policy including the appropriate service of documents on relevant parties by or on behalf of the forum of arbitration. Certain rules and processes apply to UDRP Complaints depending on the forum under which the complaint is heard, WIPO is the most common forum used for hearing UDRP Complaints.

URS v UDRP?

The URS stands for Uniform Rapid Suspension and allows for the systematic and straightforward suspension of a domain name which is registered by parties without rights to a trade mark contained within the domain. The UDRP and URS are complementary procedures although the URS is typically faster and cheaper.

How can you defend a UDRP or auDRP Complaint?

A UDRP Complaint is able to be successfully defended where the complainant fails to satisfy each of the elements required under the procedure. There are some instances where a complaint is made in bad faith which amounts to a practice known as reverse domain-name hijacking, a finding of reverse domain-name hijacking will result in the complainant being unsuccessful in obtaining an order for the domain to be transferred or cancelled.

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