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How to file a UDRP domain dispute with WIPO

Posted by Steve Vondran | Feb 23, 2022 | 0 Comments

Attorney Steve® Domain Dispute Essentials - UDRP - Filing the complaint and how to pay with WIPO - initiating the complaint

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Once your complaint is draft and you have your Annex ready to go, you need to pay the appropriate WIPO fee for your case.  For 1-5 domains at issue, the cost is $1,500.  For 6-10 domains at issue (ex. the same respondent in each case), the fee is $2,000.  This is the price for a single panel.  It will cost $2,000 for 1-5 domains and a three-panel member.  If you have 6-10 domains it will cost you $5,000 to get a three-member domain arbitration panel.  Over 10 domains are at issue and you need to call WIPO to get a quote.  I recently filed a complaint with over 10 (but under 20) and the extra fee was $500 so not too bad.

If you can afford the panel, and you believe the respondent will be responding, then I would get the three-member panel.  If you cannot convince two out of three members that your case had merit, well, what can you say after that?  WIPO accepts major credit cards.  Sorry, no crypto as of yet.  : )

ATTORNEY STEVE TIP:  Before you start you may wish to consult the WIPO filing guidelines.

First Step - Pay the appropriate fee

https://www3.wipo.int/amc-payment/

You will need to pay first since you reference in the Complaint that you have paid the appropriate fee.  Go to the link above. 

Make sure to put your details in EXACTLY - for example - the full name on the credit card.  Due to European laws, you need to make sure these are EXACT.  If not, you will get an error sign.

Keep your payment reference number documented.  ex. - EPAY-B42J-4BFD.  You will get an email confirmation.

Step Two - file your complaint and annex's

https://www3.wipo.int/amc-forms/en/udrp/eudrpcomplaint.jsp  (file complaint here).  

You can either digitally add your facts and the details they are looking for (ex. if you are representing yourself), or upload your complaint (ex. when you hire a UDRP lawyer they will usually draft a complaint using the model complaint form. 

If you have a lawyer represent you (typically we file a complaint on a pleading form), you may be able to file it directly (with annex's) here:  [email protected]  

Questions concerning the filing requirements may be sent by e-mail to [email protected]

Per ICANN's Rules - make sure to include the following:

(ix) Describe, in accordance with the Policy, the grounds on which the complaint is made including, in particular,

(1) the manner in which the domain name(s) is/are identical or confusingly similar to a trademark or service mark in which the Complainant has rights;

and

(2) why the Respondent (domain-name holder) should be considered as having no rights or legitimate interests in respect of the domain name(s) that is/are the subject of the complaint; and

(3) why the domain name(s) should be considered as having been registered and being used in bad faith

Also, if you are seeking a three-member arbitration panel, it is helpful to choose three potential arbitrators in advance.  The other side will get to choose three and a final panel will be chosen.

ALSO IMPORTANT:  Make sure to read this clearly before you certify, sign and submit the complaint.  Make sure your filing is in good faith.  I recently defeated a Strike 3 ISP subpoena defense law firm (an apparent bitTorrent competitor of mine from Chicago, Illinois) in a UDRP case, and I was looking back at this clause very closely.  It made me wonder whether they were being truthful when the complaint was submitted.  I am not saying it was in bad faith, but, the three-member panel majority found that they had abused the administrative proceeding and in bad faith. You never want a panel to make a finding like this against you.  It reflects poorly on you.

"Complainant certifies that the information contained in this Complaint is to the best of Complainant's knowledge complete and accurate, that this Complaint is not being presented for any improper purpose, such as to harass, and that the assertions in this Complaint are warranted under these Rules and under applicable law, as it now exists or as it may be extended by a good-faith and reasonable argument."

ANNEXES:  Add up to 10 annexes.  Each has a 10mb file size and should be scanned into a pdf separately.  Max file size for ALL exhibits together is 50 mb. 

These are pretty good file size limits, so you do have room to add your evidence.  Keep this in mind when creating your annex's.

You can try to reach them to increase these limits if you have more domains, but I have not found WIPO support to be particularly helpful in this area.

Annexes may be filed separately by email sent to [email protected], with the disputed domain name to which each pertains clearly indicated in the subject line.

Step Three - Serve on the Registrar

Per WIPO:

  • Following changes to the Rules, as of July 31, 2015, a complainant does not need to provide a copy of the complaint to the Respondent. The Complainant should however provide a copy to the concerned registrar in accordance with Supplemental Rules paragraph 4(c). Certain registrars have specific contact details that should be used for this purpose, which may be obtained by contacting the registrar directly. A list of ICANN-accredited registrars can be found at the InterNIC Accredited Registrar Directory.

Top Domain Name Registrars

  • Domain.com
  • GoDaddy.com
  • Bluehost.com
  • Namecheap.com
  • Name.com
  • Porkbun.com
  • Google Domains
  • Enom.com
  • Networksolutions.com
  • Dynadot.com
  • NameSilo.com
  • Domain.com
  • Name.com 

Once the complaint is filed and the fees are paid, you can serve the Complaint on the Domain Name Registrar (ex. GoDaddy).  If your complaint involves a private domain name registrant (domain by proxy - which is NOT a separate company - it is GoDaddy), then they will essentially "unmask" the domain registrant, and you can then amend your complaint to add the cybersquatter's real name.  From there, after the Respondent is served, they have 20 days to respond (an additional 4 day extension is responsible.

Registrar Lock

Once everything gets filed, the Registrar will "lock" the domain so the Respondent cannot try to sell or transfer it.  For example, with Godaddy in Tempe, Arizona, you might get something that looks like this confirming the domain(s) subject to the dispute have been locked:

Thank you for contacting GoDaddy. Per the World Intellectual Property Organization (WIPO) complaint received, the following domain name(s) has been placed on Registrar-Lock:

                                        ABCSoftware.com, BCSoftware.com, ACSoftware.net

The domain name(s) will remain locked during the pending legal proceeding. The lock on the domain name(s) shall expire automatically:

  1. Upon GoDaddy's receipt of an order dismissing or suspending the case
  2. Upon the expiration of the domain name registration including the Redemption Grace and Pending Delete Periods at the registry.

Conclusion - Contact us

Hope this helps you understand how to initiate a UDRP domain dispute with the World Intellectual Property Organization ("WIPO").  If you need legal representation, call us at (877) 276-5084 or fill out our contact form.

UDRP Resources

  1. ICANN Rules for UDRP proceedings
  2. UDRP model complaint
  3. Online filing for National Arbitration Forum
  4. WIPO search previous decisions 
  5. WIPO consensus on certain legal issues in domain disputes 

About the Author

Steve Vondran

Thank you for viewing our blogs, videos and podcasts. As noted, all information on this website is Attorney Advertising. Decisions to hire an attorney should never be based on advertising alone. Any past results discussed herein do not guarantee or predict any future results. All blogs are written by Steve Vondran, Esq. unless otherwise indicated. Our firm handles a wide variety of intellectual property and entertainment law cases from music and video law, Youtube disputes, DMCA litigation, copyright infringement cases involving software licensing disputes (ex. BSA, SIIA, Siemens, Autodesk, Vero, CNC, VB Conversion and others), torrent internet file-sharing (Strike 3 and Malibu Media), California right of publicity, TV Signal Piracy, and many other types of IP, piracy, technology, and social media disputes. Call us at (877) 276-5084. AZ Bar Lic. #025911 CA. Bar Lic. #232337

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