The Uniform Dispute Resolution Policy (UDRP) is a rights protection mechanism which allows the transfer or cancellation of domain names infringing trademark rights in cybersquatting cases. Currently, five centres are qualified to entertain UDRP complaints namely the World Intellectual Property Organization (WIPO) in Geneva, the Czech Arbitration Court (CAC), the National Arbitration Forum (NAF) in the United States, as well as an Asian centre (ADNDRC) with branches in Beijing, Kuala Lumpur, Hong Kong and Seoul, and more recently, the Arab Centre (ACDR) based in Jordan.
The UDRP rules constitute a common foundation enacted by ICANN, the Internet regulatory authority, and they must be adhered to by all arbitration centres. They make reference to a set of additional rules namely the Supplemental Rules defined by the centres themselves and which govern matters not covered in the main rules. Each centre has thus adopted its own rules, which evolve from time to time.
In respect of the form, most of the centres restrict the complaint to 5,000 words, but the NAF limits it to 15 pages and the ADNDRC curbs it to 3000 words.
The Czech Arbitration Court has provided for group actions (class actions) in the case where a similar legal argument can be applied to multiple domain names reserved by the same entity. A third person who shall be responsible to file the complaint on behalf of the complainants must then be appointed. The Arab Centre has a similar consolidating mechanism by virtue of which multiple claimants can merge their actions into a sole claim.
Only NAF authorizes applicants to submit additional arguments or documents within a period of 5 days from the day the registrant has or should have responded. It is to be noted however that any amendment to the complaint is prohibited. In other centres, the Supplemental Rules have not made allowance for this possibility.
With regard to the answer, it must in all cases be made within 20 days of notification of the complaint. The UDRP Rules provide for the possibility of granting the defendant additional time upon request, but not all centres have incorporated this provision into their rules. Thence, at the NAF, the applicant must specify the period of time requested, within a maximum of 20 additional days. Similarly, the ACDR allows the registrant to request for an extension to submit a response, where it has been agreed between the parties or where there are exceptional circumstances, which must be established by said registrant. These additional time limits are not automatically granted.
The issue of Language of Proceedings also arises. All centres comply with the rule laid down by Article 11 of the UDRP Rules on this matter, namely that save for the agreement of the parties to the dispute or exceptional circumstances, the language of the proceedings is that in which the registration agreement of the contested domain name is penned down. However, the centres approach the concept of exceptional circumstances differently. Indeed, the NAF does not often acquiesce to a change in the language of the proceedings, while the ADNDRC is more likely to do so, especially when the registration agreements are in Chinese and the registrants and/or applicants speak English. As concerns WIPO, the proceedings can be administered in two languages. Moreover, it may be a good idea to resort to the ADNDRC if an Asian registrar is involved so as to facilitate the implementation of the decision.
It is worthwhile to note that in addition to traditional domain names such as .aero, .asia, .biz, .cat, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .tel and .travel, upon which all centres are empowered to adjudicate on, some centres are competent to adjudicate upon UDRP and associated proceedings in relation to several other extensions. Such is the case with WIPO, which has jurisdiction for proceedings relating to 69 national extensions (ccTLDs). Incidentally, the domain name .fr was one of them until 2011 and is anticipated to revert to it in the near future. For instance, ADNDRC experts have jurisdiction over disputes in relation to domain names bearing the ccTLDs .cc, .nu, .pw, .tv and .ws, while the CAC is competent specifically for .eu names. As concerns .us, only the NAF has jurisdiction. Disputes relating to the new domain name extensions (new gTLDs) can be brought before all centres.
Dreyfus specializes in dispute resolution and can help you to choose the most appropriate center to act against cybersquatting. Please do not hesitate to contact us for any queries.