Historically litigious tech powerhouse, Apple, has quietly won another legal victory. This time, the mega-corp wrestled away the domain iphone5.com via the Uniform Domain Dispute Resolution Policy (UDRP).
An Apple enthusiast registered the domain in 2008. For the past four years, the website was operating as a forum dedicated to all things iPhone and Apple. As of this writing, iPhone5.com is down and the WIPO page indicates the case has been “terminated” – meaning the UDRP panel voted to give Apple the URL rights.
You may be asking: Is it legal for businesses to force private citizens to relinquish domain names without compensation? Like many legal questions, the answer is not simple and largely depends on the circumstances. The domain registration date, name of the URL and method by which one uses to take action – either through a copyright infringement lawsuit or through the World Intellectual Property Organization – are all factors.
How The iPhone5.com Domain Dispute Started
Back in 2008, a webmaster purchased iPhone5.com. The site was set up as a forum; Apple enthusiast used it to discuss the latest and greatest “genius” news and products. To avoid any confusion, iPhone5.com featured a prominent disclaimer explaining the owners and operators of the site were in no way affiliated with Apple.
Everything was going along great for a few years; then Apple started getting closer to releasing the fifth-series version of their celebrated iPhone (at the time of this writing, the latest version of the iPhone to be released is 4S). As such, the tech corp apparently decided it was time to take control of the iPhone5.com webpage (which could be an indicator that the next version of the mobile device will be #5 as opposed to a variant on #4).
Apple & The World Intellectual Property Organization: A Domain Dispute History
As they have in the past, Apple opted to use the Uniform Domain Dispute Resolution Policy (UDRP) – a legal intellectual property framework developed by ICANN and administered by the World Intellectual Property Organization. Voluntarily adopted by most Western and Asian countries, UDRP is essentially a binding arbitration process meant to govern “abusive domain registration.”
The Uniform Domain Dispute Resolution Policy can be used by anybody with an intellectual property domain dispute. Whether you’re an individual with a single domain, or a multi-million dollar conglomerate, UDRP rules do not change.
If you lose a UDRP case, you will not be compensated financially for your old domain.
If the below domain dispute factors apply to your situation, you can file a UDRP claim through the WIPO.
- the domain name registered by the domain name registrant is identical or confusingly similar to a trademark or service mark in which the complainant (the person or entity bringing the complaint) has rights; and
- the domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
- the domain name has been registered and is being used in bad faith
Domain registrars, however, cannot be targeted in a UDRP proceeding.
How Long Does The UDRP Process Take And How Much Does It Cost?
The entire UDRP process usually takes between two to three months, and the cost depends on the number of panelist that review the case and the number of domains you want reviewed. A review by one panelist reviewing one domain will cost approximately $1,500; a review by three panelists reviewing up to ten domains will run you around $5,000. (Conversely, a consultation with an Internet intellectual property attorney who can tell you the best course of action for your particular domain dispute situation will run you about $225.)
What Is The Difference Between Filing a UDRP Claim and Filing A Copyright Infringement Lawsuit? Which Is The Better Course Of Action?
Are you wondering if it’s better to file a UDRP claim or a copyright lawsuit to settle a domain dispute? Well, it truly depends on the nature of the case. How long have you had your domain? Is it associated with an already registered copyright? Do you own the rights of said copyright? What are the circumstances surrounding your opponents claims to the domain? These are all questions a UDRP lawyer will assess.
Situations that clearly satisfy the three points above are ideal for the WIPO process. That being said, if you’re not comfortable with legalese and procedures, it’s probably best to have an Internet attorney assist with the claim. Remember, the UDRP process is a legal one – and missed check-boxes or supporting material could delay matters considerably.
If, however, your domain dispute does not fall squarely into one of the three categories above, it may be best to first consult with an intellectual property lawyer who understands domain disputes. Who knows, your situation may be such that you can clear up the whole matter without either the WIPO or a lawsuit.
For financial reasons, those targeted by a UDRP claim may want to contact an expert. Why? As stated above, if you you end up on the “receiving” end of a WIPO inquiry, there’s a good chance you will not be financially compensated for your lost URL. An attorney, however, may be able to broker a settlement deal.
Kelly / Warner is well-versed in domain dispute litigation. As a practice that focuses on Internet law, we know all the ins-and-outs, dos-and-don’ts of the Uniform Domain Dispute Resolution process and online intellectual property law. Contact our domain dispute lawyers now to begin the conversation.