What Language to File a UDRP Complaint In?

The UDRP applies to domain name disputes concerning all the most common gTLDS as well as several ccTLDs. With such widespread international applicability, the choice of language may certainly become an issue in a UDRP proceeding.

Rule 11(a) of the Rules for Uniform Domain Name Dispute Resolution Policy states: “the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding.” A recent UDRP ruling from WIPO touches on this rule, as well as explains the underlying justifications for the rule.

In a recent case initiated by Lego A/S and ruled on by WIPO, Lego contested the registration of <mindstormslego.com> by a Korean entity, accomplished through a Korean registrar. Lego filed the UDRP complaint to WIPO in English, despite the fact that the registration agreement was in Korean. In support of its request that English be the language of the proceedings, Lego argued that

• the respondent had the ability to understand English as the domain name contained “mindstorms”, an English word construction
• the content of the website connected to the disputed domain name was in English

Despite the fact that no response was submitted, the panel made a decision on the language issue, and in doing so identified three factors which capture the “spirit” of Rule 11:

•  ensure fairness in the selection of language by giving full consideration to the parties’ level of comfort with each language;
• the expenses to be incurred and the possibility of delay in the proceeding in the event translations are required; and
• other relevant factors

In this case, the Panel reasoned that Lego  “is not able to communicate in Korean”, and for this reason, Lego would be delayed in filing the action and incur substantial expenses for translation. On the basis of these arguments and the spirit of Rule 11, the panel ruled in favor of English as the language of proceedings.

It is notable that a WIPO panel found a multi-national company with resources such as Lego is “not able” to communicate in a particular language. Surely, a company such as Lego is more able to communicate in Korean than the average Korean respondent is able to communicate in English. Another WIPO decision involving a similar factual situation held that a Korean respondent had “no difficulties” in communicating in English, based solely on the fact that the respondent previously wrote letters in English to the German complainant in negotiations. The panel in that case ultimately accepted submissions in English and Korean “in the interest of fairness”.

It seems that despite the language requirements of the UDRP, English complaints are accepted despite the fact that they may be different from the language of the registration agreement.  All that needs to be shown is some hardship in filing a UDRP complaint in the language of the registration agreement,  or delay in filing caused by it. And if a multinational company such as Lego can be found to have a hardship in filing a complaint in a non-English language, it seems companies smaller and possessing less resources should also be found to have a hardship in filing a UDRP complaint in a non-English language.

– ck

3 Advantages of UDRP Over Litigation in Cybersquatting Situations

Using the UDRP process to resolve domain name disputes has many advantages, and can be summarized into three main reasons. Domain name disputes bring particularly interesting issues to the table because of the way domain names are regulated and managed, and the UDRP process is a simple and quick process to deal with issues that could be much more complex and resource-consuming. To briefly illustrate, ICANN is a nonprofit, non-governmental organization which, for all practical purposes, is the lead regulator of all the world’s domain names. However, individual countries also have their own sets of rules and regulations for trademarks, which are greatly related to domain name disputes. Many problems arise at this intersection of domestic law, and international law rooted in treaties and other multilateral agreements.

1) The UDRP is quick & easy

The typical timeline for a UDRP case, from filing of a complaint to completion of the process, is 60 days, which is relatively short compared to the uncertain timelines with federal litigation. Also, only one document needs to be submitted by the Complainant, and one Response filed by the Respondent. Once a complaint has been filed, a Respondent has 20 days to respond, and WIPO will assign a Panelist within 5 days after a response has been made. Panelists are required to issue a decision to the relevant domain name registrar within 14 days of being assigned, and then the registrar is required to carry out the decision within 10 days.

2) The UDRP uses Panelists who are experts in trademark and domain name issues. 

Have the confidence that your domain name rights are being assessed by experts in the field, as opposed to federal judges with caseloads containing a small fraction of trademark cases, and even fewer domain name cases. Expert Panelists minimize the risk of faulty decisions which may lead to more expensive appeals made by a party who is wronged by a decision. Additionally, Panelists are drawn from all over the world, and may likely have more expertise on the subtle international issues present in cybersquatting cases.

3) The UDRP is an inexpensive process. 

The majority of UDRP cases are administered by WIPO in Geneva, Switzerland (“OMPI” locally), where cases involving 1-5 domain names and heard by a single Panelist costs $1500.oo USD, and a panel of 3 costs $4000.00 USD in fees. Fees are payable by the Complainant. Lawyer’s fees typically range from $3500.00 to 6000.00 USD in addition to the WIPO fees. Thus, Complainants could have a decision for under $10,000.00 USD, where federal litigators will easily ask for a $10,000.00 up front retainer just to begin federal litigation; litigation which tends to have an uncertain path and future costs.

– ck