I don’t think any of my trademark clients file a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) — or any other policy — expecting to settle the case, but it’s always a possibility that should be considered if and when the opportunity presents itself.
In this video, I discuss three reasons why a trademark owner might consider settling a UDRP case:
Guaranteed Outcome: . Frankly, some cases are stronger than others. So, if a trademark owner sees any weaknesses in its case, it might be willing to settle, to accept a voluntary transfer of the domain name, simply to be guaranteed that it will get the result it initially set out to obtain: control of the domain name. Otherwise, allowing a case to proceed to a decision always involves some degree of risk because a domain name dispute is ultimately a legal proceeding with no guaranteed outcome.
Timing: Although the UDRP process is very speedy — about two months from start to finish — sometimes a trademark owner will want to use a domain name more quickly than that. A settlement could result in a transfer within a matter of days.
Money: At the World Intellectual Property Organization (WIPO), if the parties settle a UDRP dispute before the panel has been appointed, then WIPO will issue a partial refund of the filing fee, typically $1,000 of the $1,500 fee that applies in most cases. While not a substantial amount of money, it could be important for smaller clients with more limited budgets, and larger clients sometimes see the refund as something they can apply to their next domain name dispute.
I explain each of these reasons in more detail in the video.
In addition, I talk about how the settlement process works, including the seven-step process required by the UDRP Rules. Since 2015, the UDRP has required parties to use a “standard settlement form.” Although there’s nothing that prevents the parties from entering into other terms and conditions, in my experience most settlements are confined to two simple issues: transfer of the domain name, and termination of the UDRP proceeding.
Finally, I discuss various reasons why a trademark owner might not want to settle a UDRP case, including the benefits of obtaining a published decision, which can be used a precedent in future cases and also perhaps serve to deter other cybersquatters.
