ICANN Procedure - Cybersquatting Guide (2/5)

This is the second part of our guide dedicated to the Cybersquatting, if you have missed the other parts, we strongly advise you to read them:

• Top 5 Domain Name Scams - Cybersquatting Guide (1/5)
• How to Negotiate your Domain Name - Cybersquatting Guide (3/5)
• How to Recover Your Domain Name in Court - Cybersquatting Guide (4/5)
• 20 Advices to Secure your Domain Name - Cybersquatting Guide (5/5)

Cyber-Squatting: ICANN Procedure

First, do not worry, you are not the first one to handle this issue and several solutions are available and you can try them one by one in order to take back your domain name. The possibilities are as following:

1. ICANN Procedure,
2. Trade with the new owner,
3. Court Procedure

1. ICANN Procedure

In late 1999, ICANN launched the new Uniform Domain Name Dispute Resolution Policy (UDNDRP), this new tool allow people and organizations to resolve domain name disputes.

This international policy results in an arbitration of the dispute, not litigation. An action can be brought by any person who complains (referred to by ICANN as the "complainant") that: This arbitration mechanism has proved to be an effective way to gain control of domains for many trademark holders, but success is by no means certain.

1.1   ICANN Procedure: Explanation

Considering the specific circumstances of each case, the World Intellectual Property Organization (WIPO) appoints one to three panelists to review the dispute and issue a decision. The review will take from 30 to 60 days and will be published publicly.

Each panelist must confirm that they are not linked by any manner with each of the parties involved and explicitly reveal in a written statement all information that should be considered prior to appointment. If one of the two parties has some concerned about the viability of a panelist, WIPO will consider offering a replacement.

In order to successfully win an UDRP case, you need to convince the arbiter(s) of ALL of the following three elements:

1. A domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights
2. The domain name owner has no rights or legitimate interests in the domain name, and
3. The domain name has been registered and is being used in bad faith.

All of the elements listed below must be established in order for the complainant to prevail. In the case of the complainant prevails, the domain name will be canceled and directly transferred to the complainant. In order to start the procedure you will need to give the following information:

• The domain name in question
• The registrant of the domain name
• The registrar with whom the domain name was registered
• The grounds for the complaint

Be aware that if the current registrant has re-registered “your” domain is not relevant enough for this procedure. Also, keep in mind that most of the cases brought by trademark holders which do fail, will fail because the trademark holders cannot prove that the domain is being used in bad faith. In this case, you need to prove that the current registrant has offered to sell the domain name; either by emailing you and explicitly proposing to sell the domain name or that he has displayed an announcement explaining its wish to do so.

If you want to start a dispute, a legal counsel is neither compulsory nor required even though it is recommended. The cost of this procedure depends of the number of panelists that you or the respondent is hiring and can be executed through different services like the WIPO or e-Resolution. Also, bear in mind that many of the professional domain speculators will have more experience with the UDRP than you, and will try to use this to their advantage. They know how to deal with this procedure and will use everything they can to not lose “your” domain name.

According to the WIPO organization, from 1999 to 2007 it was stated that 84% of all the procedures were decided in the complaining party's favor. If you are involved in any domain name dispute in which a .cn or .com.cn is implied, you should contact the Asian Domain Name Dispute Resolution Centre (ADNDRC) which is the accredited organism by ICANN as dispute resolution provider in China.

1.2 Advantages of the Dispute Resolution Procedure

• The UDRP process is faster than most of the court related judgment; decisions are given between 30 - 60 days from the day the complaint has been filled.
• The cost of the procedure depends of the number of panelist and domain names involved. It cost around $1,500 for a single panelist and $3,000 for three panelists for a complaint involving up to five domain names. If the complaint involves between 6 and 10 domain names, it will cost USD$2000 if the decision is taken by one Panelist to USD$5000 if decided by 3 Panelists. You can find the list of the official accredited panelists in China here.
• The complainant is usually responsible for paying the fees.  However, if the complainant chooses to have the complaint decided by 1 Panelist but the respondent chooses to have the complaint decided by 3 Panelists, then the respondent will have to pay 50% of the fees.
• In exceptional circumstances, either the Panel or WIPO may ask the parties to make additional payments to settle the costs of the administrative procedure.  For example, if there are more than 10 domain names in dispute.  
• The dispute resolution procedure doesn’t imply any jurisdictional issue which is very interesting as most of the registrants aren’t based in the same country. So you do not need to worry under which law and which jurisdiction you need to start a court-procedure.
• Last advantage, as soon as your start to fill a complaint it will also immediately prevent the registrant from transferring the domain name to any other person or company until a decision has been reached.

1.3 Disadvantages of the Dispute Resolution Procedure

• Contrary to a court, panelists are never bound to any of the previous decisions made and, based on this fact, will take their decision only on the present situation.
• As a consequence, the WIPO has launched an internet information tool in March 2005 containing information and trends of the past decisions to improve the certainty of future decisions.
• Decisions using the UDRP are also not binding on courts and proceedings can be initiated after the panel has published its decision and panelists have no power to issue emergency injunctions.
• The panel’s decisions cannot be kept confidential unlike other Alternative Dispute Resolution possibilities (ADR). This has to be taken into consideration as a company may wish to avoid adverse publicity especially as it can be harmful your brand’s reputation.
• The UDRP isn’t able to process all the disputes but only the generic Top Level Domains (gTLD) such as .biz, .com, .info, .name, .net, and .org.
• The disputes concerning country code Top Level Domains (ccTLD) such as .co.uk, .com.cn (China) are managed by the individual country registry.

The next part of our guide is dedicated to the second solution available to take back your domain:

How to Negotiate your Domain Name - Cybersquatting Guide (3/5)