The Internet Corporation for Assigned Names and Numbers (ICANN) recently enacted the Uniform Domain Name Dispute Resolution Policy (UDRP). Effective on January 1, 2000, the UDRP allows a complainant to invoke an administrative procedure under which a neutral person is selected to decide the dispute.

Any person or company in the world can file a domain name complaint concerning a .COM, .NET, .ORG domain name using the ICANN administrative procedure. Additionally, the ICANN policy applies to common law trademarks and registered trademarks.

The typical cost to the World Intellectual Property Organization (WIPO) for a case involving one to five domain names decided by a single panelist is $1,500. For a three-panel decision on a case involving one to five domain names, the cost is $3,000. Legal fees will be in addition to the costs to WIPO. Usually, the complainant is responsible for paying the total fees. The only time the respondent has to share the fees is when the respondent chooses to have the case decided by three panelists and the complainant has chosen a single panelist. 

Although decisions under the UDRP are usually made within two months after a complaint is filed and the ICANN administrative procedure is relatively inexpensive, the major disadvantage is that the sole remedy is transfer of the domain name. Decisions are published at the respective dispute resolution service provider web sites, and links to those decisions are found at www.icann.org/udrp/udrp.htm.

The five Stages of the ICANN Administrative Procedure are as follows: 

1.  A complaint is filed with one of the dispute resolution service providers listed at www.icann.org/udrp/approved-providers.htm. 

2. To avoid default, the entity against whom the complaint was made (the respondent) must file a response within twenty days of notice of the complaint. The response must demonstrate the domain name holder’s “legitimate interests in the domain name.” 
3. The dispute resolution service provider appoints an administrative panel within five days consisting of one person (or three persons, if so elected by the complainant or respondent) who will decide the dispute. 
The complainant must prove that the:
 (a) respondent’s domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights,
(b) the respondent has no rights or legitimate interests in respect to the domain name, and
 (c) the respondent’s domain name is registered and is being used in bad faith. 

 4.  The administrative panel issues its decision within fourteen days and the parties are notified of the decision within three days. 

 5.  The registrar(s) of the disputed domain name(s) implement the administrative panel’s decision if the decision is to cancel or transfer the disputed domain name (e.g. the panel found in favor of the complainant). This takes place ten days after the registrar has received notice of the decision of the panel. 

If a party is dissatisfied with the outcome of the dispute resolution process, the party may take the dispute to federal court for independent resolution. A federal suit must be filed within 10 business days after the ICANN decision. However, there is an unsettled question as to whether a District Court must review an ICANN ruling using a de novo standard or whether the District court must give deference to the ICANN ruling. 

As an alternative to filing a dispute under the UDRP, a complainant may first bring an action in federal court under the Anticybersquatting Consumer Protection Act (ACPA). Remedies under the ACPA include transfer of the domain name, and statutory damages of $1,000 to $100,000 per domain name.