What is a domain name?
A domain name is your website’s name, the address where Internet users can access your website. A domain name can be any combination of letters and numbers, and it can be used in combination of the various domain name extensions, such as .com, .net, etc. The domain name must be registered before you can use it.
What is a gTLD?
gTLD stands for generic Top-Level Domain and is an internet extension such as .com, .net, .biz, .org, etc. A full list of Top-Level Domains can be found here: List of gTLDs.
What is a ccTLD?
According to the ICANN definition, country-code Top-Level Domains (ccTLDs) are two-letter Internet Top-Level Domains (TLDs*) distinctly created and reserved for a particular country, sovereign state, dependent or autonomous territory to service their community. Although there are over 255 Country Code Top-Level Domains, only 42 countries have adopted the UDRP.
How is a country-code domain name different from a "regular" domain name?
Each country-code Top-Level Domain (ccTLD) is operated by an independent registry operator which sets policies to govern the registration and use of that particular ccTLD. Consequently, each ccTLD and its domain name is governed by a unique set of policies.
What is ICANN?
Internet Corporation of Assigned Names and Numbers (ICANN) is the internet governance body. ICANN oversees the IP numbering assignment, the domain name system, and addresses the issue of domain name ownership resolution for gTLDs. ICANN is also responsible for accrediting the domain name Registrars.
What is a domain name Registrar?
A domain name Registrar is an ICANN or national ccTLD accredited company with the authority to register domain names. Registrars are competitive retailers of domain names.
What is the UDRP?
UDRP or the Uniform Domain Name Dispute Resolution Policy defines how disputes over domain name registrations are resolved in the global top-level domains. UDRP is designed to provide a fast, inexpensive, and streamlined process for adjudicating disputes between trademark holders and registrants, domain-name holders, over domain name ownership. UDRP includes a mandatory, non-binding, low-cost administrative procedure to resolve a certain set of claims, namely, claims of abusive or, bad faith registration.
What is WHOIS?
WHOIS is an Internet database that contains information on domain names, including the name servers associated with the domain name, the domain registrar, registrant and the domain’s Administrative and Technical contacts. By performing a WHOIS search, you can find out when and by whom a domain was registered, their contact information, where the website is hosted, when the domain expires, and more.
WHOIS is also a tool that searches the domain name information contained in WHOIS databases. It is generally used to check the availability or ownership of a domain name.
Domain name disputes
What is a domain name dispute?
A domain name dispute is a conflict that arises when more than one individual or group believes it has the right to register a specific domain name. Most commonly a domain name dispute would occur when a domain name similar to a registered trademark is registered by an individual or organization who is not the trademark owner. All domain name registrars must follow the ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP). UDRP is incorporated by reference to a Registration Agreement between Registrants and Registrars.
Who can file a UDRP Complaint?
- Business owners, organizations, and individuals whose registered trademark is being used as a domain name without their consent
- Intellectual-property counsel or trademark agents representing clients involved in domain name disputes
How long does an administrative proceeding usually take?
An administrative proceeding usually takes approximately 60 – 80 days from the time the Complaint is filed to the time the decision is published.
There are two domain names, one ending in .ca and another in .com. Is it true that the two bodies have exclusive jurisdiction, or if one dispute can deal with both domain names?
What is a domain name Registrant?
The person, company or entity who owns or holds a domain name.
How to obtain a list of the domain names held by a particular Registrant when the identity of the Registrant is privacy protected?
To obtain a list of the domain names held by a particular Registrant (without disclosing the identity of the Registrant), contact CIRA. The link to the Registrant Information Access Rules and Procedures can be found here: https://www.cira.ca/policy/rules-and-procedures/registration-information-access-rules-and-procedures
What is a Registrant’s Response?
The Registrant’s (Respondent’s) Response is a formal reply to the Complaint.
If you have received a Notice from us advising that your domain name ownership is being challenged, it means that you are a Respondent in a mandatory administrative proceeding under the Uniform Domain-Name Dispute Resolution Policy (UDRP).
Under UDRP Rule 5 (a), a Response should be submitted within 20 calendar days of the administrative proceeding. If you fail to submit a response within the due date, the appointed Panel will render its decision in the absence of your response. Although the Panel can accept a late-filed response under exceptional circumstances, the Panel is under no obligation to do so.
I'm not sure if I should file a claim. Can you give me legal advice?
CIIDRC is an independent, neutral dispute resolution service provider. Our staff can’t provide legal advice or tell you how likely you are to succeed.
If you need advice about your chances of success, you may want to get professional advice from a lawyer or legal services provider before applying with CIIDRC for dispute resolution.
How Holders of Trade-names and Trade-marks Can Succeed?
In accordance with UDRP and Rules, to win a dispute resolution proceeding a rights holder must show that:
- He or she has rights in a mark—a trademark or a trade name. The policy requires the complainant to have these rights before the domain name was registered.
- The contested domain name is confusingly similar to the rights holder’s mark.
- The respondent registered the domain name in bad faith. A bad faith registration is a registration in which:
- The registrant registered the mark with the intention of selling it to the right holder or the complainant at an inflated price.
- The registrant has registered the mark as a dot-ca domain name to prevent its legal right holder from registering it, and the registrant shows a history of such behavior.
- The registrant registered the mark as a dot-ca domain name to disrupt the right holder’s business, or the registrant is a competitor of the right holder.
- There is some evidence that the registrant has no legitimate interest in the alphanumeric string that comprises the domain name
Please note that your case will be won or lost on the evidence, not by making assertions.
Can damages be awarded?
No. Under the UDRP the appointed Panel can only decide to transfer or cancel the domain name(s), or deny the Complaint. It is not possible for the Panel to make any monetary judgments.
How can Respondents (Registrants) submit a response to the Complaint?
You will be able to submit your response by logging in using the login and temporary password you receive from us. Once you submit your completed Response form via our online platform, a confirmation will be sent to your email address.
How can Respondents succeed in a Dispute Resolution Proceeding?
To succeed in a proceeding under the UDRP Dispute Resolution Policy, a Respondent must:
- Prove that the complainant does not have rights in the mark or the mark is not confusingly similar to the domain name, or
- Prove he/she has a legitimate interest in the domain name by showing that it:
- Has been used in good faith as a mark or in connection with a non-commercial activity (such as a community-based site or even a criticism site).
- Is the name of a business or activity he/she is undertaking.
- Is a generic name of his/her goods and services
- Relates to the geographical name or location of the registrant’s business activity or is the name of his/her business
- Is descriptive of the character or place of origin of the registrant’s goods or services or business.
All uses of a domain name must be legitimate and made in good faith.
Can I appeal my case if I lose?
Yes, the Policies provide for either party to bring an action in a court of competent jurisdiction (which may or may not be limited to the mutual jurisdiction selection of the Complainant) before, during, or after a domain name dispute. If you are a Respondent and lose, you have to bring your court action within ten (10) business days of the UDRP decision to prevent the registrar from implementing the decision. If the ten days have elapsed, you may still file, but the Registrar might not be prevented from transferring the domain name per the panel’s order.
Is there a requirement for a sworn affidavit in order to file evidence along with a Complaint?
UDRP Policy and Rules do not mandate that the filed evidence be supported in such a manner.
The form of evidence supporting the Complaint is in the discretion of the party making the filing.
Since it is possible to submit a Complaint against the Respondent whose identity is unknown, how can the Complainant be aware of the fact that two domain names are held by the same domain-holder (UDRP Rule 3 (c))?
The Complainant will have to file a separate Complaint for each disputed domain name.
What is the exact instruction for the Complainant to file a Complaint?
CIIDRC offers an online platform for filing complaints – File a Complaint
Do I need to submit my Complaint via email?
There is no need to send your Complaint via email.
How can I send a payment?
The CIIDRC payment processing platform is built in the online Complaint Form. Once the Complaint is completed, you will be invited to pay the required fee with a credit card.
As indicated in the Fee Schedule, a non-refundable filing fee is 425 USD. What are the conditions of refund?
The commencement fee is non-refundable, i.e. there are no conditions for a refund.
Are there any ways to find out information on the Respondent, in case WHOIS records do not contain such data, prior to complaint submission?
Trademark owners may contact domain name registrars directly to request partial disclosure of the registration data of the Respondent.
Is it possible to file a complaint when the Respondent’s information is not indicated in WHOIS records?
Yes, it is possible for trademark owners to file a UDRP complaint against the Respondent for the disputed domain by indicating, as the details of the registrant, the data set results provided by WHOIS, e.g. Privacy Redacted.
As is the case where the Respondent’s/Registrant’s identity is protected by privacy services, once the UDRP complaint is filed, ICANN-accredited registrars are required to provide the complete registration data to a UDRP provider.
Is it possible to file one complaint with respect to several domains registered by different persons (and registered by different registrars)?
Yes, according to UDRP Rule 3 (c),
The complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.
What should be the language of evidence supporting the complaint
UDRP Rule 11. Language of Proceedings states:
- Unless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.
- The Panel may order that any documents submitted in languages other than the language of the administrative proceeding be accompanied by a translation in whole or in part into the language of the administrative proceeding.
If you would like to request the language used in the proceedings be a language that you use, provide evidence such as documentation of pre-complaint correspondence between the parties indicating the identity, nationality and residence of the parties along with any other relevant evidence of the Respondent’s familiarity with the requested language.
Should the Complainant provide certified translation to the applicable language and, if so, what certification would be sufficient in this case?
Yes, the Complainant is responsible for providing a certified translation to the applicable language. UDRP Rules do not specify what certification will be sufficient.
What is Reverse Hijacking?
Reverse Domain Name Hijacking (RDNH) is a finding that a panel can make against a trademark owner in a case under the UPDR Policy. RDNH means using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name. If, after considering the submissions, the Panel finds that the Complaint was brought in bad faith (for example, to harass the Registrant), the Panel can declare that the Complaint constitutes an abuse of the administrative proceeding.
What are the possible outcomes of UDRP decisions?
There are three potential outcomes under UDRP:
- The transfer of the domain name to the Complainant, if the Complainant has won the case;
- The cancellation of the domain name, if the Complainant has won, but is content just to have the domain name cancelled;
- An order that the claim be dismissed with the domain name remaining in the ownership of the Respondent.
How does a domain name get transferred if that is the decision of a panel at the end of the process?
A UDRP administration proceeding can be initiated, won, and the infringing domain name be transferred within 60 to 80 days, start to finish. If a trademark owner wins the administrative proceeding, the domain name will be transferred to the trademark owner.
To accomplish the transfer, the Complainant should give instructions to the concerned Registrar specifying which account the domain name is to be transferred to. To do this, the Complainant/Transferee will need to enter into a Registrant Agreement with ICANN certified Registrar, at which time the Complainant/Transferee will be provided with the necessary contact ID’s to accommodate the transfer.
The transfer will take place within 10 days of the notification of the decision under the UDRP Policy, unless the domain name owner, the Registrant/Respondent, files a lawsuit within the 10-day period in the appropriate court seeking to prevent the transfer.
Can the rights holder of the trademark registered and protected in another country (for instance, Russia) apply to the CIIDRC for domain dispute resolution?