The Law Offices of Paul Michael DeCicco
San Diego - California  619-940-9245

Domain names disputes,  UDRP, cyber-squatting, computer/Cyber crimes, ISP Law,  trademarks, copyrights, trade secrets, defamation, civil litigation, business litigation, California appeals, Federal appeals, and other matters - San Diego and elsewhere...




Domain Name Disputes under the UDRP 




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Domain Name Disputes Under the UDRP     

    As a condition of registration every domain name registrant agrees to be subject to the ICANN Uniform Dispute Resolution Policy. Under the Policy, anyone may seek to have a domain name transferred or cancelled by filing a complain with one of several ICANN approved dispute resolution providers. There are no prerequisites for filing a UDRP complaint notwithstanding that the complainant should have trademark rights in the at-issue domain name; just as one may file a law suit without any justifiable basis to do so, so too may one file a UDRP complaint. However, to prevail, that is to have a domain name transferred (or cancelled), one must show the arbitrating Panel: 1) That the complaining party has rights (trademark rights) in a mark or name that is either identical to, or confusingly similar to, the disputed domain name; 2) that the domain name registrant has "no rights or legitimate interests" in respect of the domain name; and 3) that the domain name registrant registered and is using the domain name in bad faith.  If, and only if the complainant can prove all three of theses elements will the domain name be ordered to be transferred from the registrant/Respondent to the Complaining party or cancelled.

   While the procedure for filing a UDRP Complaint is not complicated, a  complainant must not only allege that each of the  UDRP elements is satisfied, but also present competent evidence in the form of  declarations and/or documents that support the claims made in the complaint. After a UDRP complaint is filed, the domain name registrant may respond with facts and argument contrary to the complainant's position. Additional submissions may be filed per the UDRP Rules. The case is then submitted to an arbitration panel of 1 or 3 neutrals arbitrators.  If a Panel decides against the domain name registrant in favor of the complainant, the domain name will be transferred unless within 10 days from the decision the registrant files an action in a court of competent jurisdiction. Filing suit stays the transfer pending resolution of the suit. 


    Via the UDRP, many domain name disputes may be economically resolved. A quick low cost resolution may benefit both the prevailing and losing parties.  While not always final, the UDRP is often a practical way to determine rights in a particular domain name. 


    Mr. DeCicco has handled numerous domain name disputes including the landmark In Rem lawsuit Porsche Motor Cars filed in 1999 against 160+ domain names.  DeCicco's success in getting the original action dismissed as to all defendants led to enactment of the AntiCybersquatting Consumer Protection Act and later the UDRP. Since then Paul  has served as one of the first group of UDRP panelists with the World Intellectual Property Organization (WIPO) and the National Arbitration Forum (NAF). He continues to serve clients having domain name related legal issues. PMD Law can assist you in drafting or filing a UDRP complaint or preparation of a response.  See our contact page . We are always available for a no-cost initial consultation.