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Domain Name and UDRP Disputes – A Definitive Guide

If someone is using a domain that includes your company’s trademark you have probably thought about taking legal action to recover the domain.  The most common way to do this is through the UDRP (Uniform Domain-Name Dispute Resolution Policy).  A proceeding through the UDRP is commonly referred to as a “domain dispute.”

The UDRP is available to recover a domain name if the owner of the domain registered it in bad faith, or, is violating U.S. trademark laws (such as the Lanham Act) or anti-cybersquatting laws (such as Anti-Cybersquatting Consumer Protection Act).

The UDRP can be a cost-effective way to secure a domain name registered in bad faith that contains your trademark.

What exactly is a UDRP proceeding?

The Uniform Domain-Name Dispute Resolution Policy (UDRP) is a mandatory arbitration process agreed to by almost everyone who registers a domain name.

The UDRP has been adopted by ICANN-accredited (Internet Corporation for Assigned Names and Numbers) registrars in all generic top-level-domains (“gTLDs”) including, .com, .net, and .org but also .aero, .asia, .biz, .cat,.coop, .info, .jobs, .mobi, .museum, .name, .pro, .tel, .travel and more.  This mandatory arbitration allows the trademark holder to file a complaint adjudicated by a private arbitrator and, if successful, will result in the transfer of the domain name to the trademark holder. The UDRP is a policy between a registrar and its customer and is included in registration agreements for all ICANN-accredited registrars. Not sure if a gTLD offers the UDRP? Call us for a free consultation.

What do I have to prove to win a domain dispute and UDRP proceeding?

A UDRP proceeding is not as easy as just filing a form. In a UDRP proceeding, the complainant must first prove that the following three elements are present:

  1. Domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
  2. The opposing party has no rights or legitimate interests in respect of the domain name; and
  3. The domain name has been registered and is being used in bad faith.

The third factor is often the most difficult to prove. However, the drafters of the UDRP provided a few examples of what is evidence of “bad faith”:

  1. The domain was registered primarily for the purpose of selling it to the complainant or a competitor for more than the documented out-of-pocket expenses related to the name;
  2. The domain was registered in order to prevent the mark owner from using it, provided that the registrant has engaged in a pattern of such registration;
  3. The domain was registered primarily to disrupt the business of a competitor; or
  4. By using the domain, the registrant has intentionally attempted to attract users for commercial gain by creating a likelihood of confusion as to source or affiliation.

What are the fees to file a domain dispute under the UDRP?

 The UDRP is a private arbitration proceeding, so the trademark owner must pay the arbitrator in order to start the arbitration. The primary organizations offering UDRP proceedings are the World Intellectual Property Organization (WIPO) Arbitration and Medication Center and the National Arbitration Forum (the Forum). The fees associated with each organization’s proceedings are outlined below.

WIPO Arbitration and Mediation Center:

Number of
Domain Names
Included in the Complaint
Single Panelist Fee
(US Dollars)
Three Panelist Fee
(US Dollars)

 1 – 5

$1,500 (Panelist: $1,000; WIPO Center: $500) $4,000 (Presiding Panelist: $1,500; Co-Panelist: $750; WIPO Center: $1,000)

6 – 10

$2,000 (Panelist: $1,300; WIPO Center: $700) $5,000 (Presiding Panelist: $1,750; Co-Panelist: $1,000; WIPO Center: $1,250)

More than 10

To be decided in consultation with the WIPO Center To be decided in consultation with the WIPO Center

National Arbitration Forum:

Number of
Domain Names
Included in the Complaint
Single Panelist Fee
(US Dollars)
Three Panelist Fee
(US Dollars)

1 – 2



3 – 5



6 – 10



11 – 15



16 or more

Contact the Forum for a fee quote: domaindispute@adrforum.com

As you can see, there are options for one or three independent panelist and the option to file UDRP proceedings for multiple domain names at once. While the initial fee is more than the fee to file a lawsuit in federal court, the cost of filing and serving a federal lawsuit will quickly dwarf the fees paid in a UDRP filing, which consists of:

  1. The initial complaint
  2. The response from the domain name owner; and
  3. A reply brief (if necessary) by the complainant

After the above briefs are filed, the arbitrator makes the decision based on those briefs.

Domain Dispute and UDRP Frequently Asked Questions:

1. I own the trademark registration. Does that guarantee me the domain? 

No. It’s possible for trademarks of the same name to co-exist in different markets. For example, Dove soap and Dove chocolate are both legitimate marks that are not likely to cause consumer confusion because the products are distinct and exist in very different markets. Similarly, if a domain name with a similar or identical trademark is registered before you have established rights in the mark, it’s unlikely that you can acquire the domain unless the domain is sold or used to target profit from your new brand.

2. Is a UDRP filing the same as filing a lawsuit?

No. A UDRP proceeding is private arbitration, however, both parties have the option of appealing to a court of law if unsatisfied with the outcome.

3. Is using the UDRP mandatory for a domain dispute?

For most TLDs (top-level domains), yes, however, there are some exceptions for different countries (for example, Canada follows its own rules).

4. How long does a UDRP proceeding take to decide a domain dispute?

A UDRP proceeding will typically take around 4-5 months from start to finish, depending on the arbitrator and the number of supplemental filings filed by each party, if necessary.

Do you need assistance with a trademark matter?

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