UDRP Could Apply to .UA ccTLD in 2019

At the UADOM domain industry conference, held in Kyiv, Ukraine on December 7, 2018, a World Intellectual Property Organization (WIPO) representative announced that negotiations on the application of the Uniform Domain-Name Dispute-Resolution Policy (UDRP) to the .UA country-code top-level domain (ccTLD) are taking place between WIPO and Hostmaster, operator of Ukrainian .UA domain.

The UDRP is the procedure established by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of domain name disputes, while WIPO is one of five approved UDRP providers that currently provides domain name dispute resolution services for 76 ccTLDs. The .UA ccTLD might become its 77th.

It is expected that the negotiations will be completed in early 2019, and that the first .UA domain cases may be considered by the WIPO Arbitration and Mediation Center in the first half of 2019.

At first, the UDRP will be applicable only to second-level private domain names (e.g. <name.ua>), which can be registered only by trademark owners and on condition that the domain name coincides with the respective trademark registration valid in Ukraine.

The UDRP application to third-level private domain names (e.g. <name.com.ua>, <name.net.ua>, etc.) is expected to be considered during the second half of 2019.

The UDRP procedure is more time- and cost-effective than pursuing an action through the courts. The cost ranges from EUR 1,315 (USD 1,500) to EUR 4,385 (USD 5,000) and the process usually lasts 60-75 days. For a complaint to be successful, the following must be proven:

• The complainant’s trademark is identical or confusingly similar to the domain name;
• The domain name registrant has no rights or legitimate interests in respect of the domain name in question; and
• The domain name is registered or used in bad faith.

The remedies available to the complainant are the domain name cancellation or its transfer to the complainant. A complainant must meet the ccTLD’s eligibility criteria in order for the domain name to be transferred to them.

By: Igor Alfiorov

For more information, please contact Igor Alfiorov at our Ukraine office.