DOMAIN NAME DISPUTES: ROADMAP OF THE PROCEDURE
10 November 2025
By Mihaela Maravela
In a previous post, we described how the Uniform Domain Name Dispute Resolution Policy (“UDRP” or “Policy”) was put in place, what types of disputes it is designed to solve, who administers the proceedings, and who the decision-makers are.
We will now present a roadmap of the procedure, what a complainant must prove, what the costs, duration and relevant enforcement issues are.
UDRP: Main Procedural Steps
The procedure takes place only on paper, with no oral hearings taking place, unless “the Panel determines, in its sole discretion and as an exceptional matter, that such a hearing is necessary for deciding the complaint.” [1]
It involves mainly: (i) the electronic filing of the complaint, (ii) the notification of the respondent, (iii) the filing of a response by the respondent, (iv) the appointment of a panel (one or three member panel) to decide the dispute, (v) the rendering of the decision, (vi) the implementation of the decision by the registrar in case the complaint is allowed (transfer or cancellation).
The UDRP providers offer on their websites forms for complaints and responses that parties can use for their submissions, including various guidelines for filing, and other resources. For example, there are model complaint and response provided by The Asian Domain Name Dispute Resolution Centre (ADNDRC), the Canadian International Internet Dispute Resolution Centre (CIIDRC) the Forum (former National Arbitration Forum) or by the World Intellectual Property Organization (WIPO).
One of the most used and comprehensive resources is the WIPO-developed Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, 2017. The Czech Arbitration Court Arbitration Center for Internet Disputes (CAC) has also developed an Overview of CAC Panel Views on Selected Questions of the Alternative Dispute Resolution for .EU Domain Name Disputes, 2nd Edition, 2016.
UDRP: What the Complainant Must Prove
To succeed in a claim under UDRP, the trademark holder must prove three elements:
That the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
That the domain name owner has no rights or legitimate interest in respect of the domain name; and
That the domain name has been registered and is being used in bad faith.
UDRP: The First Element – Confusing Similarity
As regards the first element, it requires two conditions to be met: first, the complainant must have trademark rights, and second, the domain name in dispute must be confusingly similar to that trademark.
What is relevant under the first condition is that the complainant must hold trademark rights at the time of filing the complaint. The trademark rights can be registered or acquired by use in commerce. In the latter case, the complainant must generally prove that the name became a distinctive sign associated with the complainant or his services.
On the other hand, when analyzing this first condition (“having trademark rights”) of the Policy it does not matter for which classes of products or services under the Nisa classification the opposed trademark is registered (the Nisa classification is an international classification of goods and services applied for the registration of marks). This means that even if the trademark is registered for certain products or services (for example, furniture, the complainant would still have standing even if the domain name is not necessarily used for such products or related services). Also, the place or date of registration of the trademark or the date of the first use in commerce of the trademark bear no relevance, when analyzing if the complainant holds prior trademark rights.
When analyzing if the second condition of the first element is met (“confusing similarity test”), a comparison between the trademark and the domain name is performed to determine the likelihood of Internet user confusion. To satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms typically being regarded as insufficient to prevent threshold Internet user confusion.
Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.
The top-level domain (i.e. what follows after the dot, .com, .org, etc.) is typically disregarded when assessing confusing similarity under the Policy. Also, the content of the website at the domain name in dispute is normally disregarded under the first element of the Policy.
UDRP: The Second Element – Lack of Rights or Legitimate Interest
The second condition that the complainant must fulfil is that the holder of the domain name has no rights or legitimate interest in respect of the domain name.
In this regard the UDRP [2] comprises a few examples which can be construed as evidence of rights or legitimate interest:
(i) before any notice of the dispute, the respondent’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
(ii) the respondent (as an individual, business, or other organization) has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or
(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
The consensus view of UDRP panels is that the burden of proof in establishing no rights or legitimate interests in respect of the domain name rests with the complainant insofar as making out a prima facie case that the respondent lacks rights or legitimate interests. Once such prima facie case is made, the burden of proof shifts to the respondent.
Lack of any evidence from the respondent or any response may determine, together with the rest of the elements of the case, a solution in the sense that the respondent does not hold rights or legitimate interest over the domain name in dispute.
UDRP: The Third Element – Bad Faith Registration and Use
The third condition the complainant must comply with to succeed in a UDRP claim is that the domain name was registered and is used in bad faith. Bad faith must exist both (i) at the date of registration of the domain name in dispute and (ii) at the date of the complaint.
As pointed out above, the Policy was developed to fight against cybersquatting cases, respectively cases where certain persons register domain names with the knowledge that they represent trademarks of other persons, with the intention to generate damages for the trademark owners and/or to incorrectly exploit the trademarks in their own advantage.
Under the Policy, any one of the following non-exclusive scenarios constitutes evidence of a respondent’s bad faith:
(i) circumstances indicating that the respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the respondent’s documented out-of-pocket costs directly related to the domain name; or
(ii) the respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that the respondent has engaged in a pattern of such conduct; or
(iii) the respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) by using the domain name, the respondent has intentionally attempted to attract, for commercial gain, Internet users to its website or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the respondent’s website or location or of a product or service on the respondent’s website or location.
Remedies under the UDRP
In a UDRP proceeding, a complainant could obtain the transfer or cancellation of the domain name in dispute.
Duration of the Procedure
The entire administrative procedure generally takes place between 2-3 months from the filing of the complaint.
However, if there are procedural issues, such as procedural orders, or if any of the parties submit supplemental filings, the procedure might take longer.
Costs of the Procedure
The cost of the procedure depends on the number of domain names in dispute and on whether the panel consists of one person or a three-member panel is selected by the parties.
A UDRP dispute concerning 1-2 domain names at ADNDRC and the Forum costs Canadian dollars 1,300, respectively USD 1,330, while the same dispute solved by a three-member panel would cost Canadian dollars 2,800, respectively USD 2,660. A dispute concerning 1-5 domain names costs USD 1,500 at WIPO, and EUR 800 at CAC if solved by a member panel, and USD 4,000, respectively EUR 2,600 if solved by a three-member panel.
Costs increase depending on the number of domain names in dispute, as detailed by each provider on their website.
The above taxes cover both the administrative costs of the UDRP provider, and the panelist fees.
Effects of the Decisions Issued in a UDRP Procedure
The decisions are mandatory in the sense that the registrars must comply with them, respectively, to transfer or cancel the relevant domain name if the complaint is granted.
However, parties are not precluded from accessing the courts of law even if a UDRP decision was issued. In this respect, the registrars have the obligation to transfer or cancel the domain name if they are not provided with evidence of a court claim initiated within 10 days of receiving the UDRP decision.
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About the author:
Mihaela Maravela is a Partner lawyer with Mihaela Maravela Law Office in Bucharest, Romania (member of Maravela Codescu Buliga Attorneys at law). She is an experienced counsel in arbitration, acting under numerous rules, such as ICSID, UNCITRAL, ICC, VIAC, WIPO, CICA-CCIR Rules.
Mihaela sits as arbitrator in domestic and international commercial arbitration and she solved +10 domestic and international commercial arbitrations. She also sits as domain name panelist and she solved over 340 UDRP disputes at the World Intellectual Property Organisation.
She is ranked as a Global Leader in Arbitration and Trademarks since 2018 by Lexology (former WWL).
Mihaela is also experienced in various business sectors such as corporate, M&A, finance & banking, infrastructure, intellectual property, energy, oil & gas, environmental and climate change.
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Editors: Stefanie Efstathiou (Independent Practice) and Mihaela Apostol (ArbTech)
[1] UDRP Rules, Section 13.
[2] UDRP, Section 4(c).
