BRADLEY P. HARTMAN is a partner at the intellectual property law firm Hartman Titus PLC in Scottsdale, where he
focuses on Internet, trademark, copyright, patent and general business and litigation issues. He received his B.B.A.
and J.D. from The George Washington University and serves on the executive council of the Intellectual Property
Law Section of the State Bar of Arizona.
What relief is available?
If you prevail in your UDRP complaint, the
panel may either transfer the domain name
to you or cancel the registration. The panel
may not award damages, fees or costs.
Before selecting your
business product name,
have a trademark search
How is a claim made?
A UDRP claim must be submitted to an
approved UDRP service provider. U.S.
complaints are typically submitted to the
National Arbitration Forum (NAF)
( www.adrform.com) or the World
Intellectual Property Organization (WIPO)
Arbitration and Mediation Center
( www.wipo.int/amc/en/domains/). Both
NAF and WIPO accept claims online.
conducted and register
your domain name first.
How much does it cost?
The cost depends on the number of
domains included in the dispute, and the
number of panelists requested to decide the
case. As of this writing, the NAF filing fee
is $1,300 for one or two domain names
and a single-member arbitration panel, and
$2,600 for one or two domain names and a
three-member panel. 4 The WIPO fee for
one to five domain names is $1,500 for one
panelist or $4,000 for three panelists. 5 NAF
collects additional fees for extension requests
and supplemental filings. WIPO does not
expressly permit supplemental filings.
However, the WIPO panel may, in its sole
discretion and at no additional fee, request
further submissions or determine the admissibility of evidence that may be included in
unsolicited filings. WIPO refunds a portion
of the fees if the complaint is withdrawn
before a panel is appointed. 6
or accepted by the panel,
depending on the rules of
the dispute resolution
provider. In-person or telephonic hearings are not permitted absent extraordinary
circumstances. Thus, most
decisions will be based solely
on the contents of the
complaint and the response
and supporting documents
attached thereto.
The panel must submit its decision to
the provider within 14 days of being
appointed to hear the dispute. The administrative procedure normally should be
completed within 45 to 60 days of the date
of filing the complaint.
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. 10 (The Policy can be
found at http://archive.icann.org/en/
udrp/ udrp-policy-24oct99.htm.)
What trademark rights are enforceable?
Under the Policy, domain name holders are
required to submit to a mandatory administrative proceeding in the event that a complainant asserts that the domain name is
“identical or confusingly similar to a trademark or service mark in which the complainant has rights.” 7 The policy does not
require that a complainant have a registered
trademark in order to prove a complaint.
The Policy refers only to “trademark
rights,” which can be common law or other
rights. 8 It need only be shown that the
name at issue has become a distinctive identifier associated with the complainant or its
goods or services. 9
Identical or Confusingly Similar. In this
case, it is clear that the subject domain
name is identical or confusingly similar to
Peter’s BIGFOOT trademark, in which
Peter has acquired rights through use.
Rights or Legitimate Interest in Respect of
the Domain Name. Initially, David had a
legitimate interest in the domain name,
namely, to provide information on the
Bigfoot creature. However, at the time of
filing the complaint, David had not made
use of the domain name in connection with
Bigfoot information or services. The general consensus is that the presentation of a
pay-per-click parking page is not the “bona
fide offering of goods or services” within
the scope of ¶ 4(c)(i) of the Policy. 11
How long does it take?
A UDRP proceeding is an expedited
process. After the complaint is filed, the
respondent has 20 days to
file a written response. If
the respondent files a timely response, the dispute resolution provider must submit the matter to an administrative panel within five
days. Supplemental filings
may or may not be allowed
What is the complainant’s burden?
The complainant must set forth facts sufficient to establish that the disputed domain
name is ( 1) identical or confusingly similar
to a trademark or service mark in which the
complainant has rights; ( 2) the registrant
Registered and Used in Bad Faith. Section
4(b) of the Policy identifies the circumstances that, if found to be present, “shall
be evidence of the registration and use of a
• The Matrix film is released. • College student Shawn Fanning invents Napster, a computer application that allows users to swap music over the Internet. • The number of Internet users worldwide reaches 150 million by the beginning of 1999. More than 50 percent are from the United States. • “E-commerce” becomes the new buzzword as Internet shopping rapidly spreads. • MySpace.com is launched. • Browser wars declared over; Netscape and Microsoft share almost 100 percent of the browser market. • A wireless technology called 802.11b, more commonly referred to as Wi-Fi, is standardized.
INTERNET
1999
