When it comes to domain disputes, the Uniform Domain Name Dispute Resolution Policy (‘UDRP’) is one which many legal practitioners will be aware of, and in most cases, will be the most relevant policy to apply, even if the domain is a country code top level domain (‘ccTLD’). However, some countries offer their own variation of the policy, or a different policy entirely. One of the main reasons for this, is that some territories (e.g., China) prefer to adopt a policy which ties in with national law. This article explores differences between the UDRP and a selection of international dispute policies.
The UK offers a tried and tested mediation process, which allows parties to amicably resolve a case, without the need to proceed with a full panel decision. The mediation process is free and coordinated by an impartial third party. The UDRP does not currently offer a mediation service but does give parties the opportunity to settle the matter once the complaint has been filed, pursuant to Paragraph 17(a) of the UDRP Rules. However, settling through the UDRP will still require the complainant to pay the case manager fee ($500).
When advising a client on recovery of a ‘.uk’ domain, explaining the benefits of mediation is advised, as this may result in a quick and cost-effective resolution.
On a more cautionary level, the domain dispute policy for China will not accept complaints regarding any domain names with registration terms more than three years. This falls in line with the limitation period set out in Chinese civil law, which bar an infringement claim through the national courts if the complaint is brought after three years. This illustrates that time is of the essence when it comes to Chinese domain names and those who see a clear-cut domain infringement, should dispute the domain name as soon as they can.
The domain dispute mechanism for Canada is highly similar to the UDRP. A crucial difference is the eligibility requirements for registration called the Canadian Presence Requirements. Persons who wish to register a .ca domain name or sub-domain name are required to have a connection to Canada e.g. they are a Canadian citizen, or a Canadian company. However, there is also a failsafe, that if a party owns a trade mark in Canada, this would entitle them to register a Canadian domain, but only if the domain that is the subject of the dispute is an exact match of the trade mark.
In summary, if the domain cannot be registered according to the presence requirements, it cannot be recovered through the Canadian domain dispute process. This causes some difficulty if the domain is a slight variation of the Canadian trade mark.
The dispute process in Italy has a pre-action step known as a challenge, which once filed, will lock the domain pending the outcome of the dispute. A challenge can be filed directly through the Italian registry. In some cases, this could be of benefit to the complaining party because it may encourage the other side to either suspend or transfer the domain without needing to go forward to the full decision.
In summary, it is important for legal practitioners to not assume that the UDRP will be the norm and to ensure they either consult the local policy and its requirements, or speak to a local practitioner. The latter is also useful if dealing with a territory which requires the complaint to be translated into the national language (such as Italy).
At Stobbs, we have had many years successfully recovering abusive domain names via the UDRP and other international domain dispute policies. If your brand has been affected by abusive registrations, please contact us via firstname.lastname@example.org or call our office at +44 1223 435240.