Who Can File a UDRP Complaint? 

A Uniform Domain Name Dispute Resolution Policy (UDRP) complaint may be filed by a trademark owner who is involved in a domain name dispute.

A domain name dispute may occur when there has been third-party use of a trademark within a domain name that is identical or confusingly similar to a trademark owner’s mark and has been used in bad faith by the domain name holder. If the use of your trademark within a third party’s domain name is having a negative impact on the reputation and goodwill associated with your trademark, you may consider filing a UDRP Complaint. 

Mandatory Elements When Filing a UDRP Complaint 

There are 3 main elements that you must demonstrate in a UDRP complaint to be successful. 

1.) You Own the Trademark and the Domain Name in Question is Identical or Confusingly Similar to Your Trademark

You must demonstrate that you own the trademark and that the domain name in question is identical or confusingly similar to your trademark. If you own a trademark registration for your mark, you may submit a copy of your registration certificate. You may also wish to submit examples of your use of your trademark in relation to the goods and/or services at issue.

2.) The Domain Name Holder Has No Rights or Legitimate Interests in the Trademark

You must demonstrate that the domain name holder has no rights or legitimate interests in the trademark. If the domain name holder’s use of your trademark is legitimate and does not constitute cybersquatting or other act that is designed to profit off of the goodwill in your mark, this element may not be met. It is important to ensure the domain name holder cannot demonstrate any valid rights or interests in the trademark themselves.

3.) The Domain Name Holder Acted in Bad Faith in Using your Trademark

You must demonstrate that the domain name holder acted in bad faith in using your trademark. Bad faith can be demonstrated by a repeated pattern of purchasing domains that incorporate third-party trademarks and then offering them for sale to trademark owners at a high cost. If a domain name holder uses a trademark to draw traffic to its own site and causes customers to be confused into believing that the domain and products are associated with you, this can also demonstrate bad faith.

What is the Cost to File a UDRP Complaint? 

The cost to file a UDRP complaint is dependent on (1) whether you opt for a single-member or multiple-member panel to review and issue a decision on your complaint; (2) how many domain names are included in your complaint; and (3) which UDRP service provider you select to submit your complaint. The fees listed below are those charged by the World Intellectual Property Organization (WIPO). Service provider fees are generally comparable. Attorneys’ fees may vary based on the firm chosen.

If you opt for a single-member panel, the fee for 1-5 domain names is $1,500. The fee for 5-10 domain names is $2,000. If you are including 10+ domain names, the fee is decided in consultation with WIPO.

If you opt for a three-member panel, the fee for 1-5 domain names is $4,000. The fee for 5-10 domain names is $5,000. If you are including 10+ domain names, the fee is decided in consultation with WIPO.

We note that if you initially opt for a single-member panel but the domain owner would like a three-member panel, you would be responsible for half of the cost of the three-member panel and would be required to pay any additional fees due.

How to Submit Your UDRP Complaint

Once you have prepared your UDRP complaint, it can be submitted through one of several service providers. Payment of the fees can be made electronically and, if filing through WIPO, your complaint can be submitted by email after payment has been made. 

Once the submission has been received, the service provider will initiate the proceeding. A decision can be typically received within 60 days from the date the complaint is filed.

A NYC Intellectual Property Attorney Can Help 

If you are a trademark owner and are engaged in a domain name dispute, filing a UDRP proceeding may be an efficient and expedient way to obtain a resolution. Our attorneys are experienced in handling all types of intellectual property and trademark matters, including UDRP matters. We can help you draft a UDRP complaint and offer guidance throughout the process. Feel free to schedule a consultation with an IP attorney at our firm or give us a call at 212 520 7881.