Do You Need a Lawyer to Respond to a UDRP?

By Bret Moore
UDRP stands for Uniform domain name Dispute Resolution Policy, and was created by ICANN, the governing body of "the Internet" (generally speaking) to assist trademark owners with combating unauthorized infringement of their marks used in domain names. The practice of "cybersquatting" on a registered trademark was used to great extent in the early days of the Web, with squatters attempting to leverage domain name registrations into big cash payouts (this is obviously very different from legitimate domain name "development"). The US Congress stepped in and cybersquatting was outlawed, but it's still expensive to go to court and pay a lawyer just to stop someone from abusing your trademark in their domain name.

This is where the UDRP comes in. It is an arbitration process and is fast, inexpensive, and (usually) gets positive results for trademark owners. The process recently went all-email, so now it's even environmentally friendly. For a reasonable cost, a trademark owner can obtain a very fast resolution of their complaint by a neutral decision maker appointed with one of the UDRP providers (WIPO & NAF are the most popular). You can choose to have a one or three member panel appointed to decide the case (costs go up for three member panels, obviously).

As a lawyer who works on these sorts of issues, it takes me about a week to prepare a complaint or response. A panel will usually render a decision within about 30-45 days. After that, assuming the trademark owner was awarded the domain name, there's a 10 day period for the domain name registrant to challenge the decision in court (in my experience, very rare/never happens) and then you send instructions to the registrar to effect the transfer. That's really all there is to it.

If you have a trademark, and you've got some domain names but issues with squatters, you don't have to be represented by a lawyer, but you do need to contact someone with experience making legal arguments in writing. And that's why I think you need a trained lawyer, with experience dealing with UDRP issues. But just because you need a lawyer, doesn't mean that you should go to a big law firm, where you can usually expect to pay much higher fees. It might have real value to have a big law firm in your corner if you are involved in a dispute in court, but if cybersquatting is the problem you are dealing with, you don't want to go to court, you want to file a UDRP and get it over with. A small firm or solo practitioner can provide you with the same caliber of work product for a fraction of the cost.