Wipo Domain Name Dispute Resolution (Udrp).
1. Introduction: WIPO & UDRP
UDRP (Uniform Domain-Name Dispute-Resolution Policy) is a procedure developed by ICANN and administered by WIPO to resolve disputes over domain names.
Key objectives:
Prevent cybersquatting (registering domain names in bad faith)
Protect trademark owners
Provide a faster, cheaper alternative to litigation
Grounds for UDRP Complaint (3 elements):
The domain name is identical or confusingly similar to a trademark or service mark.
The registrant has no rights or legitimate interests in the domain name.
The domain name has been registered and is being used in bad faith.
2. Key Legal Principles
Identical / Confusingly Similar
Exact matches or slight variations with different TLDs (.com, .net) can qualify.
Rights or Legitimate Interests
Registrants can claim use in good faith, non-commercial or fair use, or prior rights.
Bad Faith
Examples: reselling domain for profit, preventing trademark owner from registration, or misleading consumers.
3. Important UDRP Cases
Case 1: Panavision International L.P. v. Toeppen (WIPO, 1998)
Facts
Dennis Toeppen registered panavision.com without authorization.
Panavision, a camera equipment company, sought transfer.
Issue
Whether registering a famous trademark as a domain without rights constitutes bad faith.
Decision
UDRP panel held:
Domain identical to trademark
Registrant had no legitimate interest
Registration done in bad faith (intended to sell to Panavision)
Significance
One of the first UDRP decisions against cybersquatting.
Established bad faith intent to profit from trademark as key factor.
Case 2: Yahoo! Inc. v. Akatsuki (WIPO, 2000)
Facts
Yahoo! held the trademark for its brand; Akatsuki registered yahoo.jp and used it to redirect to another site.
Issue
Does redirection of a domain name that infringes a trademark constitute bad faith?
Decision
Panel ruled in favor of Yahoo!
Domain registration and use was in bad faith
Domain transferred to Yahoo!
Significance
Clarified that cybersquatting and misleading redirection violates UDRP rules.
Case 3: BMW v. Julien (WIPO, 2001)
Facts
Julien registered bmw.fr and used it for a fan page and car discussion forum.
Issue
Does non-commercial, fan use constitute a legitimate interest?
Decision
Panel held:
Non-commercial fan use may show some legitimate interest
But domain used to divert users or imply affiliation constitutes bad faith
Significance
Distinction between legitimate fan use and commercial exploitation.
Panels consider intent and consumer confusion.
Case 4: Microsoft Corporation v. MikeRoweSoft (WIPO, 2004)
Facts
MikeRoweSoft registered mikerowesoft.com as a joke on personal website.
Issue
Can a domain that parodies a trademark owner constitute infringement and bad faith?
Decision
UDRP panel held:
Domain confusingly similar to Microsoft
Despite joke/parody, domain was not purely descriptive, and intent to commercialize existed
Domain transferred to Microsoft
Significance
UDRP panels can transfer domains even when parody is claimed if commercial intent or confusion exists.
Case 5: Nissan Motor Co. v. Nissan Online Inc. (WIPO, 2000)
Facts
Nissan Online, unrelated to Nissan Motors, registered nissan.com before the car company attempted registration.
Issue
Can first registration by a third party without intent to sell constitute rights infringement?
Decision
Panel ruled in favor of Nissan Motor Co.:
Registrant had no legitimate interest
Domain name caused confusion
Domain registered in bad faith
Significance
Even prior registration may be challenged if trademark rights are strong.
Emphasizes priority of trademark vs domain registration.
Case 6: Red Bull GmbH v. Internet Development (WIPO, 2005)
Facts
Red Bull’s trademark was used in redbullenergy.com to sell unrelated products.
Decision
Panel found:
Domain confusingly similar to registered trademark
Used for commercial gain
No legitimate rights claimed
Significance
Reinforced bad faith use for commercial purposes as a core ground for transfer.
Case 7: Google Inc. v. MikeRoweSoft and Other Parodies (Multiple WIPO Decisions)
Facts
Domains like googl.com, g00gle.net registered by individuals.
Decision
Domains found confusingly similar to Google
Bad faith inferred even if joke or typo-squatting intended
Domains transferred to Google
Significance
Clarifies typo-squatting falls under UDRP
Panels consider confusion likelihood and intent to profit
4. Observations & Principles from UDRP Cases
| Principle | Explanation |
|---|---|
| Identical/Confusingly Similar | Domain closely resembles trademark, even small variations, can violate UDRP |
| Rights/Legitimate Interests | Fan sites or descriptive uses may be valid if non-commercial and not misleading |
| Bad Faith | Key factor: intent to sell, mislead, divert traffic, or exploit trademark |
| Commercial Use | Domains used for profit are more likely to be transferred |
| Priority vs Registration | Trademark rights can override earlier domain registration |
5. UDRP Procedure (Summary)
Trademark owner files complaint with WIPO
Panel appointed (1-3 members)
Respondent submits response
Panel decides within 2 months
Remedies: Domain transfer, cancellation, no monetary damages
Advantages:
Quick resolution
Cheaper than court litigation
Enforceable via domain registrar
Limitations:
Cannot award damages
Focuses on domain, not trademark infringement in other contexts
6. Conclusion
WIPO UDRP has been a critical tool to combat cybersquatting. Case law shows:
Clear transfer trends for domains that infringe trademarks
Legitimate interests can prevent transfer (fan use, non-commercial purposes)
Bad faith intent—commercial gain or misleading practices—remains central
Panels emphasize likelihood of confusion and registration intent
UDRP continues to evolve with new TLDs and global internet expansion, balancing trademark rights with freedom of expression online.
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