WIPO's Expedited Domain Name Dispute Resolution Service

WIPO's Geneva Offices

Author Melatron Licence CC BY-SA 3.0  Source Wikimedia Commons

 

Jane Lambert

The World Intellectual Property Organization ("WIPO") domain name dispute resolution service can already resolve a dispute between a trade mark owner and a domain name holder in less time than it takes for statements of case to be exchanged in England and Wales.  The fee that the WIPO charges for resolving the dispute is US$1,500, which is less than many advocates would charge for settling particulars of claim.   That sum is irrecoverable in domain name dispute resolution proceedings, but it will often be no more or even less than the difference between the costs that a successful claimant might spend on launching an interim injunction application and the amount that he or she might recover on a summary assessment.

Domain name dispute resolution will be even faster under a scheme announced yesterday by the WIPO (see Updated WIPO UDRP Fee Schedule and NEW Services).  Under that scheme, decisions can be delivered within a month of filing the complaint.  Claims under the scheme will be managed by a dedicated team of WIPO employees and decided by a special roster of panellists.  There is an additional cost.    Complainants will be charged US$4,000 instead of US$1,500 for the current service.   US$3,000 of that money will go to the panellist, and the rest to the WIPO for administration

This scheme will be suitable for generic top-level domain name disputes (domain names ending in ".com", ".net", ".org" and similar suffixes) and some country code domain name disputes that use the Uniform Domain Name Dispute Resolution Policy, where parties choose their dispute to be resolved by a single panellist.  It would appear to include ".wales" and ".cymru" domain name disputes (see Jane Lambert Welsh Top Level Domain Names 12 Apr 2019 NIPC Cymru and Eich cartref chi. Eich Cymru chi. Eich Parth chi and Your Wales. Your Home. Your Domain). Disputes where a respondent opts for a three-member panel would fall outside the scheme.

Readers who wish to learn more about the scheme should read a helpful article by Doug Isenberg entitled A Faster Option for Resolving Domain Name Disputes Under the UDRP 9 March 2026, Gigalaw. Mr Isenberg is a Georgia lawyer who sits on the WIPO domain name dispute resolution panel and has vast experience in domain name dispute resolution.  For more basic information on domain name dispute resolution, see my resource page on the topic.

Anyone wishing to discuss this topic may call me on +44 (0)20 7404 5252 during normal UK office hours or send me a message through my contact page.

The IPR Help Desk's Domain Name Primer

 

Jane Lambert

The IPR-Helpdesk is an EU-funded service that supplies information on intellectual property to small and medium enterprises.  It carries out research into IP, publishes regular newsletters and other publications and holds webinars and other events.  Among its most useful publications are infographics that communicate essential information in a digestible format.

The latest of those infographics is on Domain Names and Cybersquatting which can be downloaded free of charge from the EU Publications Office.  That document explains what is a domain name, what is meant by the terms TLD (top-level domain), second-level domain and third-level domain and the difference between generic and country-code top-level domains.  It discusses how to register domain names, the practice of cybersquatting and what can be done to prevent it.

Readers who require further information on domain names, cybersquatting and dispute resolution may read my articles on Domain Name Disputes and Dispute Resolution Policies and Domain Name Glossary.  The Uniform Domain Name Dispute Resolution Policy is one of the most successful alternative dispute resolution schemes in the world.  For a few hundred United States dollars, trade mark owners or those who could bring an action for passing off can apply for the transfer or cancellation of a domain name that is the same as or confusingly similar to their trade mark. 

Such applications come before administrative panels (of which I am one) who decide whether the domain name is the same or confusingly similar to a trade mark in which the complainant has rights,  whether the domain name holder has any rights or legitimate interests in the disputed domain name and whether the domain name was registered and is being used in bad faith.    If the panel finds in favour of the complainant on all those issues he or she can order the transfer of the domain name to the complainant or its cancellation,   The whole process is completed within a matter of weeks.   Usually, far less time than would be required for a claimant to issue and serve proceedings in the English courts and for the defendant to respond.   

The UDRP has been adopted by many other domain name registries including Wales (see my articles Welsh Top Leval Domain Names  12 April 2019 and Welsh IP Cases: D2016-0485 ALDI GmbH & Co. KG v. Mahfuz Ali  13 April 2019 NIPC Wales).  Many others such as Nominet regulates the ".uk" space and the Swiss domain name authority have similar policies.   To see how the process works just read my decision in Re D2022-1858 lancastersarchery.com.

Readers may be interested to learn that I do not confine myself to deciding domain name disputes.  I also advise and represent parties to such disputes.   As a panellist, I know exactly what the tribunal that will decide the dispute is looking for.   Having such insight, I can usually offer a much more successful and cost-effective service than most others.   Those who want to learn more can call me on +44 (0)20 7404 5252 or send me a message through my contact form.