UDRP/URS proceedings: Where do you go?

question-mark-1872634_640Uniform Domain Name Dispute Resolution Policy (UDRP) proceedings were established in 1999 to fight cybersquatting. More than 31,800 disputes have already been handled thanks to its efficiency. Five centres are entitled to receive UDRP complaints: the World Intellectual Property Organization (WIPO), the Czech Arbitration Court (CAC), the National Arbitration Forum (NAF), the Asian Domain Name Dispute Resolution Center (ADNDRC) and the Arab Center for Dispute Resolution (ACDR).

The launch new domain name extensions in 2013 gave birth to a new alternative dispute resolution process: the Uniform Rapid Suspension (URS) system. Three arbitration centres have jurisdiction to decide URS cases today: Italy’s MFSD, the ADNDRC and NAF.

Each proceeding is administered according to the guidelines enacted by the Internet Corporation for Assigned Names and Numbers (ICANN). The policies constitute a common set of rules for all arbitration centres to follow. They refer to a set of supplemental rules that are defined by the centres themselves, and govern the points that have deliberately not been covered by ICANN.

As a result, each centre has adopted its own rules, which evolve over time. Which proceedings do you choose: URS or UDRP? And which centre do you go for?

Here is a list of key points to take into consideration when choosing the most appropriate centre:

Domain name extension: Depending on the domain name is a gTLD, a newgTLD or a ccTLD, it is important to choose between the UDRP or URS proceedings. Legacy TLDs such as .com, .org, and .edu are not eligible for the URS proceedings. They only apply to new TLDs. Moreover, only some country-code TLDs can be the object of a UDRP complaint, if the entity responsible for the concerned country-code TLD voluntarily adhered to the UDRP proceedings. Other special proceedings regarding specific domain names will be governed by specific alternative dispute resolution proceedings by centres different from those mentioned above, for example, the SYRELI proceedings administered by the registrar AFNIC for .fr.

Also, according to UDRP proceedings rules, the complaint may involve several domain names, provided that they have all been registered by the same person. The URS proceedings (and some UDRP centres, namely the CAC) allow group actions against the disputed domain name holder but only if the applicants are related.

Geographical location of the centre: Thanks to the many authorised UDRP and URS centres spread worldwide, selecting a centre, which, due to its geographical location, will be better suited than another for a specific case for reasons such as location of the dispute, different time zones, language and bank transfer costs, is wise. Moreover, the ADNDRC is itself composed of four centre located in Asia. The applicant is free to opt for the centre of its choice.

Complaint formalities: Complaints are sent by electronic means to the chosen centre. The ACDR is the only centre that still authorises parties to file a complaint by post or fax. The new UDRP proceeding rules provide that the centre itself will be responsible for sending the complaint to the defendant. Some UDRP and URS centre allow parties to submit new documents after receiving the defendant’s response. This is generally accompanied by financial compensation. For example, a review in URS proceedings costs $300 at the ACDR. The centre, such as NAF, may even allocate an additional time if required by the proceedings, against remuneration. Special attention should be paid to the drafting and sending of the complaint.

Length of the complaint: The common UDRP proceeding rules allow the centres the freedom to set themselves the maximum number of words or pages that a complaint may contain. So, most centre limit the number of words to 5,000 (ACDR, CAC and WIPO). Only 3,000 words are allowed for a complaint filed with the ADNDRC. NAF accepts complaints containing a maximum of 15 pages (including appendices). However, each centre provides a standard complaint form allowing the applicant to gain time and efficiency. URS complaints are all limited to a maximum of 500 words by the common rules (Article 1.2.7).

Communications: The parties cannot contact panel members directly. An administrative officer is provided by every centre to whom all papers and documents relating to the dispute will be forwarded throughout the proceedings. However, the administrative officer does not have any decision-making powers. Therefore, this is a similar factor in all centres.

Language of the complaint: Depending on the centre, the language of the complaint may vary. Theoretically, it shall be the language used in the registration contract of the disputed domain name(s), unless otherwise agreed by the parties or otherwise decided by the panel. Moreover, it may be ordered that any document submitted in a language other than that of the proceedings be accompanied by a translation into the language of the administrative proceedings (to WIPO, for example).

However, NAF adopts a stricter requirement compared to other centres by requiring that the language of the proceedings shall only be the language used in the domain name registration contract. URS complaints must always be drafted in English and will be translated into the language of the country of the holder by the centre. This question regarding the language of the proceedings is essential as it might significantly increase the costs of proceedings.

Identity of panel members: Each centre provides a list of its experts publicly available on its website. At the very least, their names and qualifications must appear. This transparency gives information on the members who have been chosen by the centre to arbitrate on the dispute, and it allows the verification of any conflict of interest, as well as their impartiality. Moreover, when a panel of three experts is requested by the parties, the latter can, under certain conditions, propose three experts from the centre’s list to arbitrate the dispute. However, where only one expert is requested, the choice will be made by the centre.

The number of experts available for each centre depends on the size of the centre and parties can make the best choice based on the expert’s experience, the nature of the dispute, the language of the parties, and so on. It may therefore be interesting to consult the list of experts before opting for a centre.

Length of the proceedingssuspension: The duration is set by the rules established by ICANN in order to ensure a speedy process and foreseeable deadlines. The response time, or that relating to the appointment of the panel, the decision-making, or even the publication, does not really differ from one centre to another, regardless of the type of proceedings.

The suspension of ongoing UDRP proceedings is an option open to the parties to enable them to find an amicable settlement. The terms and condition regarding this point vary according to centres. NAF allows parties to seek a suspension of up to 45 days after filing the complaint and before the panel of experts is appointed, while the CAC allows a 14-day suspension upon written request by both parties, which can be renewed twice.

Appeal: It is not possible to appeal UDRP decisions, but a lawsuit remains possible. All URS centres provide a right to appeal and such proceedings are regulated in the same way. The only significant difference would be the costs of appeal. There is a fixed price for NAF, based on the number of domain names, and on the number of panel members for the ADNRC and the MFSD.

Cost: The cost of proceedings is probably the most significant factor in distinguishing centres from one another. Indeed, for UDRP proceedings, depending on the centre, on the number of members in the panel and the number of domain names involved, the cost of proceedings can vary greatly. Therefore, costs need to be carefully considered. UDRP proceedings involving five domain names and a panel of three members will cost $2,900 before NAF, $3,300 before the ADNRC, $4,000 before WIPO, $3,700 before the ACDR and $3,100 before the CAC.

For URS proceedings involving five disputed domain names, they will cost the applicant $375 before the NAF, $225 before the MFSD and $360 before the ADNDRC. However, the MFSD will take into account, in its pricing structure, the type of applicant (individual, public or private company, association, and so on), and the price varies according to this criterion. Finally, we must not forget that additional costs may be charged due to a suspension request, a re-examination of the case or an appeal from the URS decision. Selecting an arbitration centre can therefore be tricky and requires careful deliberation in each case according to the context of the dispute.

At Dreyfus we have considerable experience worldwide in this area and have successfully acted for many clients considering the best strategy for the promotion and protection of your rights. If you come accross a domain name which you believe is taking advantage of your brand, or is causing harm, please contact us and we would be happy to discuss with the option available to you.