pdf

The New ICANN Uniform Dispute Resolution Policy: Another Weapon Against Cybersquatters

Date: Jan 28, 2000


On October 24, 1999, the Board of Directors for the Internet Corporation for Assigned Names and Numbers ("ICANN") adopted a Uniform Dispute Resolution Policy ("UDRP") for certain top level domain names. The UDRP is designed to offer trademark owners an efficient and cost effective mechanism for resolving disputes with cybersquatters. The following offers a brief overview of the UDRP, including the critical differences between the new Policy and the former policy enforced by Network Solutions, Inc. ("NSI").

I. The UDRP mandates an administrative proceeding against a domain name registrant where:

    • The domain name is identical or confusingly similar to a mark in which the complainant has rights; and

    • The registrant has no rights or legitimate interests in the domain name; and

    • The domain name was registered and is being used in bad faith.

II. The standard applied is:

    • A non-exclusive list of factors evidencing registration and use in bad faith; and

    • A non-exclusive list of factors showing the presence or absence of the domain name holder's legitimate interest in the domain name.

III. Cause of action available:

    • Mandatory administrative proceeding.

IV. Jurisdiction/Venue

    • The complainant selects a provider to administer the proceedings. The complainant is responsible for costs for one panelist. Fees are split where the respondent expands the panel from one to three.

V. Top Level Domains (TLDs) affected:

    • Any domain name filed under ICANN which, at present, includes only the .com, .net and .org TLDs.

VI. Who may be subject to the UDRP

    • Any g-TLD domain name registrant worldwide may be subject to "jurisdiction" under the policy.

VII. Remedies

    • Cancellation or transfer of domain name.

VIII. Differences between the UDRP and the former Dispute Resolution Policy enforced by NSI.

    • The UDRP provides for the cancellation or transfer of the domain name in question if the complainant is successful;

    • There is no "on hold" provision pending the outcome of the dispute;

    • The complainant's trademark need not be identical to the domain name at issue; and

    • The UDRP provides a remedy for both registered and common law trademarks.

 * A full copy of the UDRP can be found at http://www.icann.org

For more information on cybersquatting or other Internet related issues, please contact Sheila A. Millar at (202) 434-4143 or by e-mail at millar@khlaw.com