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Beware of Extra Fees in UDRP Proceedings

Doug Isenberg

The Uniform Domain Name Dispute Resolution Policy (UDRP) is known as an inexpensive alternative to litigation (and that's true), but some proceedings can end up costing a trademark owner more than it may have expected.

There are generally two additional types of expenses that can arise during the course of a UDRP proceeding: (1) extra filing fees for certain aspects of a case filed at the Forum, and (2) an increased filing fee if the domain name registrant wants a three-member panel to decide the case.

These fees are in addition to the initial filing fee that a trademark owner is required to pay a UDRP service provider when it submits a complaint.

Mandatory Filing Fee

The initial filing fee (required in every UDRP case) is approximately the same at the World Intellectual Property Organization (WIPO) and the Forum, which together account for about 97% of all UDRP proceedings: At WIPO, the filing fee starts at $1,500 for a complaint that includes up to five domain names and a single-member panel. At the Forum, the starting fee is $1,300 for up to two domain names and a single-member panel.

(The fees at two of the smaller providers — the Asian Domain Name Dispute Resolution Centre (ADNDRC) and the Arab Center for Domain Name Dispute Resolution (ACDNDR) — are comparable, starting at $1,300 and $1,500, respectively. But the fees at the Czech Arbitration Court, which is much less popular, start at $500.)

Since a trademark owner can choose where to file its UDRP complaint, it should know at the beginning what fees to expect.

Additional Fees at the Forum

If a trademark owner files its UDRP complaint at the Forum, it should be aware of three instances in which additional fees may arise.

The first possible increased filing fee at the Forum applies where a complaint contains "arguments alleging Respondent aliases."

Specifically, the Forum's Supplemental Rules state:

If a Complainant alleges that a single Respondent is using multiple aliases and makes such arguments in the Complaint for Panel consideration..., the filing fee shall be increased proportionately to the number of aliases involved. Please contact the FORUM… with the number of domain names and the number of aliases to obtain a fee quote.

This would arise where a complainant believes that a single person or entity is the registrant of multiple domain names and has used "aliases" or different names when registering the domain names. Cybersquatters sometimes do this to frustrate a trademark owner's ability to include all of the domain names in a single complaint, something the UDRP allows where "the domain names are registered by the same domain-name holder."

Alleging respondent aliases is an efficient tactic for a complainant but could lead to significant additional work by the UDRP service provider, which, I assume, is why the Forum charges an additional fee in those cases.

The second possible increased filing fee at the Forum applies where a party (either the complainant or respondent) submits "additional written statements and documents" — that is, a submission in addition to the complaint or response.

This situation would typically occur if a complainant wants to respond to a response (sometimes referred to as a "Complainant's Supplemental Filing") or if a respondent wants to respond to a Complainant's Supplemental Filing. The UDRP itself does not expressly allow these additional filings (if submitted without solicitation by the service provider or panel), so the Forum charges an additional fee for them.

This additional fee of $400 is somewhat controversial, not only because none of the other UDRP service providers charge it, but also because some panels won't consider supplemental filings even if the extra fee is paid.

The third possible increased filing fee at the Forum applies where a respondent requests extra time to submit its response.

While the UDRP Rules state that a provider "shall automatically grant [an] extension" upon request for four days, a respondent can also request a further extension of up to 20 days. If a respondent makes that request, the Forum requires payment of a $100 "extension fee."

Additional Fees for Three-Member Panels

A different type of additional fee that a trademark owner should know about when filing a UDRP complaint applies at all of the UDRP service providers — the Forum, WIPO, ADNDRC, CAC and ACDNDR — because it is in the UDRP Rules, not in any of the providers' supplemental rules.

This fee arises in a very limited but important situation: when a complainant has requested only a one-member panel but, the respondent requests a three-member panel. In that case, the complainant would have paid the filing fee for a single-member panel, but the rules state that each party shall pay half of the fee for a three-member panel.

Here's an example of how this plays out:

  1. Complainant pays an initial filing fee to WIPO of $1,500 for a UDRP complaint with one domain name, requesting a single-member panel.
  2. Respondent files a response and requests a three-member panel. The fee for a three-member panel in this situation is $4,000. The respondent must pay half of this fee, that is, $2,000, when filing its response.
  3. The other half of the fee, that is, the other $2,000, must be paid by the complainant. Because the complainant initially paid $1,500, it must now submit an additional fee of $500.

While this situation ends up costing a complainant more ($2,000 total) than it had paid when it chose a one-member panel ($1,500), it is less expensive for the complainant than if it had elected a three-member panel itself when filing the complaint, in which case it would have been responsible for the entire $4,000 filing fee.

Conclusion

In most UDRP cases, none of these additional fees arise. Typically, a trademark owner pays the filing fee for a one-member panel and may not incur any further expenses. But because they are possible, it is important to be prepared (and ready to pay) when filing a complaint.

By Doug Isenberg, Attorney & Founder of The GigaLaw Firm. Learn more by visiting The GigaLaw Firm website. Doug Isenberg also maintains a blog here.

Related topics: Domain Names, Intellectual Property, Law, UDRP

 
   

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