United States: ICANN Domain Name Dispute Resolution Proceedings

Since the middle of 1999, an administrative procedure has been available to recover domain names corresponding to trademark rights where the domain name has been registered and used by another party in bad faith. The Uniform Domain Name Dispute Resolution Policy (UDRP), adopted by the Internet Corporation for Assigned Names and Numbers (ICANN), provides an efficient, economical alternative to commencing litigation against a cybersquatter who has registered a domain name in bad faith. UDRP applies to the generic top-level domain names (gTLDs, which are names that end in .com, .net and .org) as well as 17 country code domain names (ccTLDs, such as names that end in .mx (Mexico), .ve (Venezuela) and .ph (Philippines)).

Unlike litigation, which can often be protracted, a UDRP proceeding is usually completed within two months. Furthermore, a UDRP action is limited to one submission each by the complainant and respondent, and except in exceptional cases, does not include any discovery. Moreover, complainants pay a fixed fee for the arbitration, avoiding the often burdensome legal fees and costs associated with litigation.

There are currently four agencies approved by ICANN to provide this domain-name arbitration: the World Intellectual Property Organization (WIPO), the National Arbitration Forum (NAF), eResolution (eRes) and the CPR Institute for Dispute Resolution (CPR). Of these providers, WIPO handles approximately 65% of all ICANN cases. Of the decisions rendered by WIPO to date, roughly 4 out of 5 cases have been decided in favor of the complainants, who obtained transfer of the domain names. The arbitrators who make the decisions are subject to a conflict-screening process and have substantive experience in the areas of intellectual property law, electronic commerce and the Internet.

Once a decision (e.g., Network Solutions, Inc., Register.com) is made by one of the approved agencies to transfer a domain name, the registrar of the domain name must implement the transfer decision unless the losing respondent commences court proceedings against the complainant within ten days. Therefore, this process can provide a straightforward and timely way to recover a valuable intellectual property asset that has been taken by a cybersquatter or other bad-faith actor.