What is a UDRP procedure? 

You have discovered an abusive domain name registration of your business or brand name online. 

What is the next step? 

In minor cases, it is often possible to contact the current domain name holder and settle the domain dispute outside of court proceedings. 

Many gTLDs (generic top level domains) and ccTLDs (country-code top level domains) offer a formal abuse mechanism known as a Uniform Domain Name Dispute Resolution Policy (UDRP) with the domain registry to recover a domain name that has been registered fraudulently. 

The Uniform Domain Name Dispute Resolution Policy (UDRP) is a conciliation procedure introduced by the Internet Corporation for Assigned Names and Numbers (ICANN) for resolving domain name disputes. The aim of the UDRP is to provide classic cases of domain grabbing or cybersquatting and, consequently, cases in which the trademark rights are clearly violated. 

A complainant in a UDRP proceeding must establish three key elements: 

• The domain name is identical or confusingly similar to a trademark which the complainant has rights to; 
• 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”. 

If the UDRP dispute is won by the brand owner, the domain name is transferred into the brand owner’s portfolio ensuring it does not return to the available domain pool unless released by the brand owner. 

A UDRP case typically takes from 6 – 12 weeks and throughout the case the domain name will continue to resolve. While it is perfectly possible for in-house counsel to file a UDRP it is more normal for a brand protection specialist, such as BrandShelter, to undertake this on behalf of the trademark owner in order to maximise the chance of a successful outcome, reduce costs and speed up the process. 

BrandShelter enables the initiation of a domain transfer via a partners’ law firm, specializing in internet law, with the help of a Uniform Domain Name Dispute Resolution Policy Uniform Rapid Suspension (UDRP) procedure. 

What is a URS procedure? 

The URS process is a dispute policy that allows a brand owner to file a complaint and obtain a temporary domain name suspension. While the domain name ownership is not transferred, the domain is suspended until it is due to expire. Cybercriminals will give up on a domain name that they continue to own but cannot use. The typical time to conclude a URS case is around three weeks. 

BrandShelter can help you appeal to suspend domains with the help of a Uniform Rapid Suspension (URS) process with the assistance of our law partners. 

The domain name in question must be identical or similar to a word mark, in which case the trade mark must be a valid registration currently in use or a trade mark which has already been clarified by a court decision or which is protected by a law or contract at the time of the filing of the complaint. 

The domain owner can not have any rights or legitimate interests in the domain name, and the domain name must have been registered and used in bad faith in order for these procedures to be used. 

URS vs UDRP 

Both procedures are administered by dispute resolution service providers accredited by ICANN. For example, the WIPO Arbitration and Mediation Center (WIPO Center) is such a dispute resolution service provider. 

When it comes to deciding which procedure to follow, there are minor differences that could affect the outcome. The URS requires that the complainant provides evidence that is clear and convincing and only recognizes word marks, while the UDRP does not have a similar limitation and has lower standards of proof. This means that the legal advice is usually that URS should be used in the most obvious cases of trademark infringement, whereas a UDRP complaint might be more successful in ambiguous cases. 

The URS procedure also has an internal appeal process so that either party can appeal the decision, which the UDRP administrative proceeding does not have. The most significant difference between the proceedings is that the only resolution available with the URS is a suspension of the domain name, rather than a cancellation or a transfer. 

If you need help on deciding how to proceed, contact us today.