Under the previous rules for the Uniform Domain Name Dispute Resolution Policy (UDRP), domain name registrants that had a complaint filed against them were supposed to be notified of the complaint by the trademark owner that filed it.
Then, a revised set of UDRP rules that went into effect in 2015 eliminated the complainant's obligation to notify the respondent. Instead, the new rules only require the UDRP service provider (such as WIPO or the Forum) notify the respondent, presumably after the registrar has locked the domain name, preventing any transfers. This rule change was designed to combat cyberflight, which occurred when a respondent transferred its domain name to a new registrant after the UDRP complaint had been filed but before the service provider had officially "commenced" the proceeding.
While cyberflight has largely been eliminated, domain name registrants sometimes still receive advance notice of UDRP complaints — from lawyers, domain name defense companies or bloggers that closely monitor filings.
Here's what seems to happen: Sometime after a trademark owner files a complaint but before "the date of commencement" (that is, the date on which the service provider notifies the domain name registrant), a service provider may publish partial information about the filing on its website. For example, WIPO maintains a web page with a list of cases that identifies the case number, domain name(s) and complainant for newly filed cases.
The list of cases doesn't appear to identify the respondent until a case has been decided (apparently to prevent public disclosure in the event that, for example, a proceeding is terminated as the result of a settlement). But it's a simple process to perform a whois search on the domain name(s) listed to discover the registrant's identity and contact information (or, at least, the details that were presumably available to the complainant when filing the complaint — which may or may not be accurate).
And, because the list of cases is apparently updated before a case is officially commenced (but, at least it seems, after the "Lock" required by the rules has been requested), diligent reviewers of the list may be able to learn about the existence of a particular UDRP complaint before an affected domain name registrant is officially notified.
In fact, that's exactly what some lawyers and domain name defense companies do — as a method of identifying potential clients. Also, some domain-industry blogs regularly publish articles about newly filed UDRP complaints, apparently scanning the lists to get quick notice of the newly filed disputes.
An email sent by one company to UDRP respondents contains the subject line, "A Dispute has been Filed against your Domain Name" and then invites recipients "To learn more about our Domain Name Dispute Defense Package."
These emails are obviously confusing to domain name registrants who receive them before being formally notified of a UDRP complaint. In some cases, the domain name registrants have contacted the UDRP service provider asking whether the unsolicited emails are a "scam" or a "hoax."
In addition, the emails sometimes contain inaccurate information. One version contains a couple of questions and answers, including this: "Do I Have to File an [sic] Response? Yes." This is wrong — not only because the UDRP process does not require a domain name registrant to submit a response but also because a domain name registrant can win a UDRP case even without filing a response, given that there is no "default judgment" available to a trademark owner that files a complaint.
These solicitation emails seem like the cybersquatting equivalent of "ambulance chasing," which is generally prohibited in the United States.
Plus, there's another implication of publishing details about a UDRP complaint before a respondent has been notified by the service provider: Advance notice effectively gives a respondent more time to prepare a response, because the response is not due until "twenty (20) days of the date of commencement of the administrative proceeding." So, a respondent who learns about a complaint, say, two days before commencement actually has 22 days to prepare its response.
Given this practice, trademark owners filing UDRP complaints should be aware that respondents may learn about their complaints sooner than expected.
Written by Doug Isenberg, Attorney & Founder of The GigaLaw Firm