News: Resolution of disputes with domain names

Nowadays, honest and conscientious owners of trademark rights more and more often face with the registration of domain names that contain a trademark in themselves. In the future, such domain names are resold to the legal owner of the trademark or are used in bad faith, damaging business and reputation of the rightholder. This kind of illegal activity is called cybersquatting, and persons practising such actions are called cybersquatters.

One of the effective ways to return a domain name under the control of a legitimate rights holder of a trademark is to handle a claim to a cybersquatter at the WIPO Arbitration and Mediation Center (hereinafter referred to as the "Center"). The Center deals with resolving domain name disputes.

The Center was created to accelerate and reduce the cost of the procedure for resolving disputes related to intellectual property, as an alternative to litigation.

Disputes regarding domain names are considered by the Center in accordance with the Uniform Domain Dispute Resolution Policy ("UDRP"), and the procedure for consideration is conducted electronically - by exchanging electronic messages.

All domain registrars (hereinafter referred to as "Registrar") and all their clients are bound by the agreement on mandatory use of UDRP for dispute resolution. UDRP is part of the domain name registration agreement.

To initiate the procedure of administrative proceedings in the Center, as well as to the Registrar(-s), a claim must be sent. The person-initiator is called the claimant (hereinafter - the "Claimant").

The claim must contain:

• request for adopting a decision regarding the claim;
• name, postal and e-mail addresses, as well as telephone number and fax number of the Complainant and all representatives authorized to act on behalf of the Claimant in the course of administrative proceedings;
• preferred way of sending messages to the Claimant's address;
• indicate one or more domain names that are the subject of the claim;
• indicate one or more of the trademarks or service marks on which the claim is based and describe the goods or services, if any, with which each mark is used;
• description of the grounds for the claim;
• sanctions sought by the Claimant (re-registration of domains for the Claimant);
• remaining procedural actions that were initiated or terminated with respect to domain names;
• attachment with documentary or other evidence and confirmation of registration of all trademarks and service marks on which the claim is based.

The Center will then provide the Registrar with a request for confirmation. The request for confirmation will include a request to block the domain name (a number of measures applied by the Registrar to the domain name, which, at a minimum, prevent the change of information of the domain owner and the registrar by the respondent (hereinafter - "Respondent")).

Within 2 (two) business days from the receipt of the request for confirmation of the Center, the Registrar will provide the requested information and confirm the blocking of the domain name.

The Center shall, within five (5) calendar days from the receipt of the claim, review it for compliance with administrative requirements and, if it meets them, send the claim, including all attachments, electronically to the Respondent and the Registrar, and send written notice of the claim to the Respondent within 3 (three) calendar days after receiving proper charges from the Claimant (in the amount of $ 1500 by bank transfer to the Center’s account).

Within 20 (twenty) calendar days from the date of the commencement of the administrative proceedings (the date the Center sends the claim to the Respondent to all available and known electronic addresses), the Respondent shall submit to the provider its response to the claim. The Respondent may request an extension of the period for four calendar days.

If the Respondent has not submitted a response to the claim and there are no exceptional circumstances, the Center will resolve the dispute on the basis of the claim.

Further, the Center shall appoint a member of the commission (hereinafter referred to as the "Commission") within five (5) calendar days after receiving the reply of the Respondent or after the expiration of the period of time allotted for the answer.

As soon as the Commission is appointed in its entirety, the Center notifies the Claimant and the Respondent of the composition of the appointed Commission and the date on which the Commission, in the absence of exceptional circumstances, should forward its decision on the claim received by the Center.

In the absence of exceptional circumstances, the Commission sends its decision on the claim to the Center within 14 (fourteen) days after its appointment.

Within 3 (three) working days after receipt of the decision from the Commission, the Center shall transmit the full text of the decision to the Complainant and the Respondent, registrars concerned and the ICANN (Internet Corporation of Assigned Names and Numbers). Registrars concerned must notify the Complainant, the Respondent, the Center and the ICANN of the date of implementation of the decision within 3 (three) business days from the receipt of the decision.

Total period for considering the claim and making the decision on it is ~ 60 (sixty) calendar days.

Lawyers of Law&Trust International have extensive experience in successfully resolving such disputes and will be happy to help you challenge illegal registration of a domain name and put it under control.