Tag: UDRP

New document: 5 minutes to understand UDRP procedure

5 minutes to understand - Domain names - UDRP procedure - Nameshield

Established on ICANN’s proposal, the UDRP (Uniform Domain-Name Dispute Resolution Policy) extra-judicial procedure allows to sanction obvious and indisputable infringements of a trademark right resulting from the registration of identical or similar domain names by third parties, a practice commonly referred as “cybersquatting “.


UDRP applies not only to generic extensions (gTLDs) in .aero, .biz, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .travel and new extensions (new gTLDs), but also to country code extensions (ccTLDs) of which the registry has accepted the UDRP principles.

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Municipal elections 2020: buzyn2020.fr and buzyn2020.paris domain names redirect towards Anne Hidalgo’s campaign

Municipal elections 2020: buzyn2020.fr and buzyn2020.paris domain names redirect towards Anne Hidalgo’s campaign
Image source: Sadnos via Pixabay

Following the announcement on Sunday February 16, of Agnès Buzyn’s candidacy to Paris municipal elections, several political journalists discovered on Monday that the domain name buzyn2020.fr was registered but redirected towards “Paris en commun”, the campaign website of another candidate, Anne Hidalgo.

Several other names were registered on Sunday night, also redirecting towards Paris en commun’s homepage like buzyn2020.paris, agnesbuzyn2020.fr and agnesbuzyn2020.com.

If several of these names were anonymously registered, two of them were registered by the association “Montreuil en Commun”, a group of “four municipal councilors” who claims to be “without any political label” and explains to Numerama the fact that these names were available “indicates the improvisation of her candidacy and LREM’s lightness regarding a serious matter such as a candidacy to run for Paris’ mayor”.

Raising awareness to cybersquatting risks

The LREM candidate will not be able to use the domain name buzyn2020.com either, which was registered on Monday by Crisalyde, a risk and crisis management consulting company.

“I took the opportunity to raise awareness. It’s my job, I saw a risk and I took advantage of it”, explains Selim Miled, Crisalyde’s CEO, to the Parisien.

Cybersquatting is a practice that consists in taking a domain name by registering it, using or mentioning a trademark, a business name, a patronym or any name on which the applicant has any right, in order to make material or moral profit from its current or future notoriety.

Thus, Crisalyde registered 6 domain names: buzyn.paris, agnesbuzyn2020.paris, buzynpourparis.com, buzynpourparis.fr, buzyn2020.info and buzyn2020.com. “As soon as Agnès Buzyn’s team contacts me, I will give them the domain name at the purchased price, with a friendly advice” adds Selim Miled.

What strategy to adopt against cybersquatting?

Agnès Buzyn’s team will have to contact the persons who registered these names, who may decide to graciously give them back or resell them at prices they will have set.

However, legal actions exist aiming to retrieve a cybersquatted domain name, like the UDRP procedure (Uniform Domain Name Dispute Resolution Policy). This procedure will allow to suppress or transfer the domain name.

And lastly, in order to prevent any cybersquatting risk, it is recommended to implement a domain names registration monitoring to be immediately alerted of any new domain names registration that can potentially infringe your notoriety or your business.

For more information on our online brand protection expertise and domain names recovery procedures, don’t hesitate to contact a Nameshield consultant.

Cybersquatting: Increase of UDRP complaints filed with WIPO in 2018

Cybersquatting: Increase of UDRP complaints filed with WIPO in 2018
Image source: janjf93 via Pixabay

In the domain names’ world, the rules applied by many registries of “first come, first served” often lead to many cases of abusive registrations and of cybersquatting in particular. This is a practice that consists in taking a domain name by registering it, using or mentioning a trademark, a business name, a patronym or any name on which the applicant has any right, in order to make material or moral profit from its current or future notoriety.

In order to fight against these fraudulent actions and to assert their rights, brands’ owners can implement a targeted action to recuperate or suppress the cybersquatted domain name, called UDRP procedure (Uniform Domain Name Dispute Resolution Policy). This procedure is administered by an Arbitration Center like the one of the WIPO, the World Intellectual Property Organization.

According to the WIPO’s General Director, Francis Gurry: “Domain names involving fraud and phishing or counterfeit goods pose the most obvious threats, but all forms of cybersquatting affect consumers. WIPO’s UDRP caseload reflects the continuing need for vigilance on the part of trademark owners around the world.”

UDRP complaints filed with WIPO in 2018*

On March 15, 2019, the WIPO published its last annual report on domain names’ disputes.

In 2018, the WIPO’s Arbitration and Mediation Center received a record of 3447 UDRP cases filed by brands’ owners, i.e a rise of 12% compared to the previous year.

Cybersquatting: Increase of UDRP complaints filed with WIPO in 2018
Source: WIPO Statistics Database

However these disputes concerned 5655 domain names, a decrease comparing to 2017 which counted 6371 names.

The main gTLDs in the cases filed with WIPO are unsurprisingly, the .COM (far ahead with 72.88%), the .NET (4.62%), the .ORG (3.50%) and the .INFO (2.23%).

Regarding the disputes on the domain names registered in the new extensions, they represent nearly 13% of the disputes, mostly in .ONLINE, .LIFE and .APP domains.

And lastly, nearly 500 complaints regarding names registered in ccTLDs have been filed, nearly 15% of all the disputes administered by the WIPO in 2018.

The 3 main sectors of complainant activity are the sectors of banking and finance, biotechnology and pharmaceuticals, and Internet and IT.

Geographically, France is placed second with 553 cases filed with the WIPO, just behind the United States (976 complaints) and is one the most reactive countries on this subject.

Note that on all the UDRP cases filed in 2018, Nameshield ranks second in the filing world complaints with 343 cases filed and 66 represented customers**.

Our teams are of course at your disposal to inform you on the possibilities of contentious domain names recovery actions.

*Source: WIPO Statistics Database

**Source: Nameshield’s report on UDRP procedures, 2018

19 years after: UDRP in few figures

19 years after: UDRP in few figures
Image source : Nick Youngson CC BY-SA 3.0 Alpha Stock Images

Launched in 1999, the UDRP process (Uniform Domain Name Policy) is today the fastest and the most affordable solution for resolving clear cases of cybersquatting.

Indeed, UDRP offers to brands owners a transparent process, carried out by independent experts allowing them to retrieve or delete a domain name infringing their brands. It is important to note that the expert cannot allocate the damages and interests to the requester.

MARQUES, a European association representing brand owners’ interests, raised, on the 1st of February 2019 in a letter addressed to ICANN, the issue of the costs supported by the brands owners for the defense of their brands in case of cybersquatting.

The association collected several information regarding UDRP complaints registered with seven Arbitrage Centers providing or having provided this process, and in particular the ones concerning the number of UDRP complaints filed and the associated costs.

In particular, between 1999 and December 2018, the WIPO (World Intellectual Property Organization) registered 42 535 complaints filings. Knowing that the cost of the arbitration fees of the WIPO (besides the representation fees) is at least $1,500 USD, WIPO then collected at least $63,802,500 USD from administrative fees over nearly 20 years.

Furthermore, MARQUES proceeded to an estimation of the costs regarding complaint filings by taking into account the fees of the representation by a legal consultation and concluded that the cost of a UDRP complaint filing would be $5,000 USD. Knowing the arbitration fees, the representation fees by a legal consultation would then be $3,500 USD.

Thus MARQUES estimates the costs (which regroup administrative fees and legal consultation fees) supported by the trademarks owners are $360,190,000 USD for the period 1999 to the end of 2018.

However, some members of the association, think that this is a low estimation and that it would not take into account other expenses related to the protection of their rights (revenue loss, monitoring costs, defensive registration, lifting anonymity, research, etc).