Registrants of domain names enter into contractual agreements with the issuer of the domain name (the “registrar”). Often, part of the contract stipulates that disputes will be resolved following the UDRP process.
Despite the potential benefits of having a uniform dispute resolution system for domain name issues, domestic courts are not required to adhere to decisions made under UDRP; this has been acknowledged by many Circuit Courts across the United States. Because the UDRP does not take trademark law of the country where the dispute is based into account, decisions made by the UDRP can end up being contradictory to domestic law and domestic courts do not need to adhere to its rulings.
Unfortunately for those that have fallen victim to domain theft, the UDRP is not an appropriate avenue for recourse. Similar to the Anticybersquatting Consumer Protection Act (“ACPA”) the UDRP is designed to address trademark issues, not theft. The UDRP specifically governs disputes between a registrant and a third party over the registration of a domain name. The elements to be met in proving a case under the UDRP are incredibly similar to what is found within the ACPA, including:
- The trademark holder must demonstrate that the domain name is “identical or confusingly similar to” the mark
- The registrant has no rights associated with the domain name, and
- That the domain name is being used in bad faith.
However, should you incorrectly lose your domain name under the UDRP, the ACPA provides for secondary recourse. Congress has given registrants an affirmative cause of action allowing them to recover domain names that were lost in UDRP proceedings. Under the ACPA, a registrant whose domain name was “suspended, disabled or transferred” can sue for a declaration that their actions were not in violation of the ACPA and request an injunction returning the domain name to them.
This speaks to the fact that Circuit Courts have held that they do not need to pay deference to UDRP decisions, let alone view them as binding.
For more information regarding domain name theft, what you can do if you have been a victim of it, and what the UDRP can do for you in regards to cybersquatting claims, contact Revision Legal’s Internet attorneys, specializing in Cybersquatting or general Internet matters, through the form on this page or call 855-473-8474.