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Filing UDRP without a lawyer

     
5:42 am on Mar 23, 2016 (gmt 0)

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I got some good ideas from this 2008 thread Handling a Domain Name Dispute Without a Lawyer [webmasterworld.com] but wanted to see if there were some recent advice for the other side.

Someone registered a ccTLD that is my company's globally registered trademark in its entirety (trademark also registered in the respective ccTLD country). This would not have drawn my attention if the same person listed in the WHOIS had not offered to sell me (the WHOIS contact for other similar domains) the domain the same day he registered it. There is no website associated with the domain. He's just trying to list it for sale on various sites. This could easily be argued 'bad faith' IMHO (and that of my legal advisers).

This seems like an easy UDRP win. In the past we've used law firms to handle this sort of thing, but that can get expensive. I'm wondering if it's worth it to save some money here. How hard is it to file a UDRP yourself and handle the follow-up?

  • What's the best venue to file in?
  • How many arbiters should I go for?
  • Is it possible to win a case without going to the arbitration stage?

My law firm already sent this person C&D letters, and he's still adamant he wants to sell the domain. Further follow up has been ignored. I'm wondering if this could be an easy case to handle myself.
10:47 pm on Mar 23, 2016 (gmt 0)

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Start by asking (demanding) that your law firms send you copies of all past UDRP filings: letters, arbitration documents, replies to any counter docs, etc. Don't reinvent the wheel. Duplicate it . . but first read the current rules.

Generally, respondents are advised to seek a 3 member panel. This suggests that in many cases the moving party only requests a 1 member panel. (Less expensive.)

Not sure about venue. I'd choose the "most legitimate / law abiding / well versed in the law" venue. I lean towards legitimate, well informed and defensible justice.

You can win, without going to arbitration, by the registrant agreeing to the transfer without further ado. IF the registrant is a "player" let them know that past UDRP opinions have used a "pattern of (bad) registrations" as a justification for fast-tracking adverser judgments in future cases. (Players know this, so he/she may not "have game".)

You can do this yourself. Keep it simple. Get your documents in order to support your TM rights and be certain to incorporate them into your submission from the start.
8:34 am on Mar 24, 2016 (gmt 0)

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What's the benefit of going for a 3 member panel over 1? Would the other party have to incur the additional panel member costs?

The registrant doesn't seem to have much of a clue about this. I had hoped earlier letters would have been sufficient. They usually are. I've had real players, with stories written about them in the domain press for their cases where they've fought and won. I got them to fold with attorney lawyers pointing out bad faith evidence similar to this. For some reason this guy hasn't budged.
3:17 pm on Mar 24, 2016 (gmt 0)

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The benefit of 3 vs. 1 is that sometimes the 1 you get assigned can be . . inexperienced, (reputedly) biased or clueless (as to the law or how to apply it), etc. Some folks presume bias tends to run in favor of those claiming rights to a domain. (I have read a few . . dubious decisions.)

Your guy may either be a noob, clueless to the law, live in a country where "getting him to pay" (if you later sue based on TM) will be problematic, or may simply be a no-asset kid who simply does not care and/or thinks he/she has struck gold. He may also be running scared. One never knows.

You might consider, if you can I.D. the person, hiring a lawyer/solicitor who practices in the registrant's "backyard". Nothing quite gets one attention as sightings of the gunslinger that is coming for you, ya know? ;) :p
9:46 pm on Mar 24, 2016 (gmt 0)

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My whole idea of self-filing was to keep costs down, so I'm not sure hiring an attorney local to the registrant would be helping me in that respect, but it's not a bad idea to consider.

Fortunately the registrant appears to be using real contact information on the WHOIS. They only appear to be in it for the payout as they have offered to sell the domain for a reduced price.
12:27 am on Mar 25, 2016 (gmt 0)

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Not all ccTLDs use UDRP/URS* as part of their rights protection mechanisms, some use their own dispute resolution services, some require you to contact the registry and some require the dispute to be filed in a particular court.

*URS is a cheap option to consider but I think the .pw registry is the only ccTLD to have adopted it.
 

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