Guide to Filing a UDRP Complaint

 

If you are a business owner, organization, or an individual whose registered trademark is being used as a domain name without your consent, or if you are intellectual-property counsel or trademark agent representing clients involved in domain name disputes, CIIDRC can help. 

This website (www.ciidrc.org) provides an online platform to facilitate the resolution of domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP). 

If you decide to file a Complaint, please carefully read the information below.

The Complaint form will allow you to navigate between the UDRP, the Rules for UDRP and the CIIDRC Supplemental Rules. The Complaint form will limit the maximum number of words in your Complaint to 5,000 words in order to comply with UDRP Rule 3 and CIIDRC’s Supplemental Rule 13.

To assist you in filing a successful Complaint, we have put together a non-exhaustive list of important aspects of the UDRP administrative proceeding. 

As a Complainant you need to:

1. Ensure you clearly demonstrate your ownership of (or your right to use) a trademark or a service mark.

2. Include a copy of the trademark or service mark registration certificate, or other clear evidence supporting your rights in the trademark or service mark and demonstrating your continued use of such trademark or service mark, or clear evidence demonstrating the owner of the trademark or service mark has granted you the right to use it. 

3. Include as an Annex a copy of the Whois record which shows ownership of the disputed domain name so that the Panel can see that the case is brought against the correct party.

4. Provide information for each Complainant (if there is more than one Complainant). 

5. Include arguments and evidence to support the consolidation of multiple Complainants into a single Complaint, where for example multiple Complainants truly have a common grievance against the same Respondent. Multiple Complainants may demonstrate a common grievance against the Respondent:

  • where Complainants have a common legal interest or rights that are allegedly affected by the Respondent’s conduct, or 
  • where the multiple Complainants are the target of common conduct by the Respondent which has clearly affected their legal interests. 

6. Indicate why the person/entity identified in the Complaint has been identified as the Respondent, e.g., the concerned registrar’s Whois database (Information about the concerned registrar can be found on the Internic database at www.internic.net/whois.html). Include copies of the printout of the database search(es) conducted with date of search indicated and submit them as a numbered Annex with your complaint.

7. If requesting that 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 a respondent’s familiarity with the requested language.

8. Include as an Annex (appropriately numbered) to your complaint a true and correct copy of the domain name dispute policy (UDRP) that applies to the domain name(s) in question.

9. Indicate when the domain name(s) was/were registered and specify the provision in the registration agreement that makes the UDRP policy applicable to the domain names(s).

In a UDRP proceeding, the Complainant must prove that the following three (3) 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 in dispute; and
  3. The domain name in dispute has been registered and is being used in bad faith.

Key Elements for your Complaint

All three elements specified in Paragraph 4 (a) of the UDRP policy must be alleged and proven by the Complainant. Submit relevant documentation in support of the Complaint as Annexes, along with a schedule (index) of such Annexes. 

Element 1: The domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights

Provide a complete description of the goods and/or services with which the Complainant either is associating with or intends in the future to associate with the trademark or the service mark. 

Element 2: The Respondent (domain-name holder) has no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the Complaint. 

Provide evidence regarding any relevant aspects of the UDRP Policy, Paragraph 4(c), including:

  • Whether there is any evidence of the Respondent’s use of, or demonstrable preparations to use, the domain name(s) or a name corresponding to the domain name(s) in connection with a bona fide offering of goods or services;
  • Whether the Respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the Respondent has acquired no trademark or service mark rights;
  • Whether the Respondent is making a legitimate non-commercial of fair use of the domain name(s), without intent for commercial gain or to misleadingly divert consumers or tarnish the trademark or service mark to which the Complainant has rights.

Element 3: Specify why the domain name(s) should be considered as having been registered and being used in bad faith.  

Provide evidence of any relevant aspects of the UDRP policy, Paragraph 4(b), including:

  • Circumstances indicating the domain name(s) was/were registered or acquired primarily for the purpose of selling, renting, or otherwise transferring the domain name registration(s) to the owner of the trademark or service mark (this could be the Complainant) or to a competitor of the Complainant, for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name(s);  or
  • Whether the domain name(s) was/were registered in order to prevent the owner of the trademark or service mark from reflecting the mark in a domain name, and whether the Respondent has engaged in a pattern of such conduct; or 
  • Whether the domain name(s) was/were registered primarily for the purpose of disrupting the business of a competitor; or 
  • Whether by using the domain name(s), the Respondent intentionally attempted to attract for commercial gain, Internet users to the Respondent’s website or other on-line location, by creating a likelihood of confusion with the Complainant’s trademark or service mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website, location, product or service on the Respondent’s website or location.

Once you have finished creating your Complaint, you will be prompted to submit a commencement fee of $425 US via online payment platform. You are also responsible for the Panel fee payment whether you select a single-member or three-member Panel. However, if you, as the Complainant, elect a single-member Panel, and the Respondent chooses to elect a three-member Panel, you will be prompted to submit half of the required payment towards the three-member Panel fee.

Once you submit your completed Complaint form via our online platform, a confirmation will be sent to your email address. Please visit our UDRP Process (graphic) page to view the steps of the UDRP administrative proceeding.

Please note that your Complaint may be denied by an appointed Panel after assessing the merits of your case. You may represent yourself or seek the assistance of legal counsel to represent you in the UDRP administrative proceeding.

The Policy can be found at https://ciidrc.org/domain-name-disputes/uniform-domain-name-dispute-resolution-policy/

The UDRP Rules can be found at https://ciidrc.org/domain-name-disputes/rules-for-uniform-domain-name-dispute-resolution-policy-the-rules/

The CIIDRC Supplemental Rules, as well as other information concerning the resolution of domain name disputes, can be found at https://ciidrc.org/domain-name-disputes/ciidrc-supplemental-rules/

If you have any questions, please contact us. We are here to help (but will not provide legal advice).