2012.08.22

What Happens after a UDRP?

A UDRP is an arbitration under the Uniform Dispute Resolution Process and Policy that allows someone to file a complaint with an arbitration forum, usually WIPO or NAF, and get a decision usually within 30 to 45 days. As part of that UDRP, they must establish three things. One, ownership of a trademark that the domain name is confusingly similar to; two, that the registrant and user of the domain name doesn't have any legitimate rights or interest to that domain name; and three, that the registrant of the domain name actually registered it and used it in bad faith.

Welcome to Domain Name Law Radio. Domain names are valuable assets.  Domain disputes, domain theft, cybersquatting, and domain monetization are important issues.  Our domain lawyers have answers to your domain name questions. 

This is Domain Name Attorney Brian Hall with Traverse Legal PLC., a law firm that represents domain name owners, and those involved in domain name disputes throughout the United States.  Today I will be answering the question, “what happens after a UDRP?”

Now keep in mind, a UDRP is an arbitration under the Uniform Dispute Resolution Process and Policy that allows someone to file a complaint with an arbitration forum, usually WIPO or NAF, and get a decision usually within 30 to 45 days. As part of that UDRP, they must establish three things.  One, ownership of a trademark that the domain name is confusingly similar to; two, that the registrant and user of the domain name doesn't have any legitimate rights or interest to that domain name; and three, that the registrant of the domain name actually registered it and used it in bad faith.

If they are able to successfully establish that, the arbitration panel will award the domain to the complainant, and order that it be transferred.  If they are unsuccessful, the domain name will be unlocked, and the registrant will be able to do with it as they would like.  But the question often arises, on both sides, either complainant or respondent, what happens or what can I do after the UDRP decision is issued?  Well, a lot of that depends on which side you're on, and what the decision was.

So let's look at each possible scenario.  If the complainant filed the UDRP and prevailed, like I said, they should get the domain transferred to them within 10 days.  If the domain is not transferred within 10 days, it's because the respondent has taken some action to preclude the domain from being transferred.  And typically, in the United States, that's done by filing for relief under the ACPA or  Anti-Cybersquatting Consumer Protection Act.  And what that does is it challenges and seeks declaratory judgment that the ownership and use of the domain is not cyber-squatting.  However, filing under the ACPA in the United States is not the only location that such an action can be instituted.   

It can also be instituted in various other places in other countries, which leads to many issues for those that have been successful under the UDRP only to find that the registrant has filed an action to stop the domain from being transferred in some foreign country.   At that point, many issues arise, and they will likely need to get counsel in that particular country to get that action dismissed, so as to allow the domain to transfer.

The second scenario is, if the complainant was successful and the domain is transferred, is that the end of everything?  From an UDRP standpoint, it is.  Because under the UDRP you cannot collect damages, you cannot recover attorney's fees. However, just because you successfully had the domain transferred does not mean you cannot take further action against the registrant user of the domain name.   As I alluded to earlier, the ACPA not only provides a cause of action to a respondent who believes they were unlawfully having their domain taken from them, but it also is an offensive weapon to be used by the person that believes that cybersquatting has occurred.

In those instances, the trademark owner can file an Anti-Cybersquatting Consumer Protection Act lawsuit in federal court, and be able to establish the elements in hopes of recovering statutory damages of up to $100,000 per domain name, and recovery of attorney's fees.

Ultimately, in a federal court, the UDRP decision is entirely irrelevant.  It does not carry any precedential value.  So, oftentimes, complainants will try the UDRP route.  If successful, they may not take any further action.  However, they're not precluded from further action and may decide to move forward with additional action in order to recover attorney's fees, get damages, or to also address other causes of action that wouldn't be handled under the UDRP, such as traditional trademark infringement or unfair competition claims.

Ultimately, the UDRP is, indeed, an effective mechanism and tool through which cybersquatting can be resolved.  However, the complainant is not limited to only the UDRP, even if they're successful.  Alternatively, a respondent that has been subject to a UDRP in a transfer order that orders the domain to be transferred to the complainant, is not without resource via the ACPA, or possibly other causes of action in other countries.  So, at the end of the day, you should be aware, regardless of which side you're on, complainant or respondent, and regardless of the decision, transfer order or to remain with the registrant, that additional action may be necessary and may be possible. Once again, this has been attorney Brian Hall answering the question, “what happens after a UDRP?”

You’ve been listening to Domain Name Law Radio, where domain names are always the topic of the day.  Whether you are a domain name dispute attorney or a client, we are the number one resource for all your domain name questions.

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