UDRP In The World Of Potentially Unlimited TLDs?

brand protection solution professionals
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  • The Law Offices of Ryan S. Dougay
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  • June 10, 2024

UDRP In The World Of Potentially Unlimited TLDs?

The World Intellectual Property Organization recently reported that 2023 brought a record number of domain name dispute filings with nearly 6,200 complaints filed. This is considerable when you consider that in 2013 WIPO had adjudicated 2585 disputes, which means that in the period of 10 years, the number of cases before WIPO has more than doubled.

WIPO attributed this growth to the overall growth in domain name registrations, a greater awareness of the UDRP by companies of all sizes, and the evolving nature of cybersquatting activities. 1

That all sounds fair and reasonable, but, one of the bigger and underreported issues is the increasing number of Top Level Domains. At least once a week, I receive an email from a major domain name registrar advertising new top level domains with the most recent email inviting me to bid on animal themed domains, including, bird.go, rabbit.x and rabbit.crypto.

Domain.com currently offers over 300 TLDs ranging from .archi to .za.com. For domain name professionals this means that not only do clients have to contend with filing disputes against squatters and counterfeiters using traditional methods of confusion and deception such as simple variations and adjustments to our client’s domain names, but there is now the additional issue of being able to amplify these transgressions by using the same or similar domain names with an option of 300 TLD extensions to choose from. By increasing the number of TLDs, the Internet Corporation for Assigned Names and Numbers (ICANN) has increased the scope for infringing domains to be used and thus for more complaints to be filed.

In recent months I have been working with a client where there are dozens and dozens of infringing domains that use a combination of variations of our client’s domain name, and, identical domain names with different TLDs. For example, if our client’s company was trading through the domain name ABC.com, our client now needs to initiate Uniform Domain Resolution Policy (UDRP) proceedings against infringers who are using variations of ABC.services, ABCE.services, ABCE.com, ABC.kitchen, AYBC.com, and so on.

Presently, for a UDRP determination by a single panelist, for between 1 to 5 domains, the administration fees are $1,500, and, for 6 to 10 domains the administration fees are $2,000 by a single panelist. WIPO Administrative Panels have been known to adjudicate single disputes with hundreds of domain names, however, it is uncertain what the administration fees charged in these dispute actually are, but, if we take a case where there are 30 to 40 domain names, the fees charged by WIPO could be between $6,000 to $8,000.

The other issue is that the UDRP division appears to be severely understaffed, with decisions sometimes only being made a week or two after the determination dates are set, even where the Respondent fails to provide a response. The effect of this protracted decision-making process is that bad-faith domain holders register new domains with old domain names being used to redirect traffic, until the date in which they are inevitably transferred to the complainant through the UDRP. The process then needs to start all over again to recover the new domains that have been registered.

Whilst I recognize that more time, energy effort, and resources are required for larger more complex matters, the costs of the UDRP process should remain accessible to small and midsize businesses that could increasingly benefit from what remains the cheaper and more effective alternative to cumbersome, inter-jurisdictional litigation.

As ICANN continues to increase the number of allowed TLDs, so too does ICANN have the corollary responsibility to ensure that the UDRP is equipped to deal with the increasing number of domain-related disputes being filed and ensure its accessibility to businesses of all sizes, by looking at new ways to decrease the costs of arbitration for mass infringements and accelerate the decision-making process by having a separate decision making track for undefended proceedings.

Thank you to the brand protection solution professionals at Justec Brand Protection for the above blog.

  1. Record Number of Domain Cases filed with WIPO in 2023 (https://www.wipo.int/amc/en/domains/caseload.html)