UDRP: How to Recover a Domain That Uses Your Trademark

Someone has registered a domain containing your trademark. Perhaps they have put ads on it, perhaps they have offered to sell it to you, perhaps it redirects to your competitors. Before you pay up or give up, know that there is a procedure designed for exactly this: the UDRP. This guide explains how it works, what you need to prove, what it costs and how long it takes, and what changes for .it and .eu domains, which follow their own rules. It is general information, not legal advice: every case turns on its specific facts.

What the UDRP is and which domains it covers

The Uniform Domain-Name Dispute-Resolution Policy was adopted by ICANN in 1999 and applies to all generic top-level domains: .com, .net, .org, .info, .biz and the hundreds of newer extensions (.app, .shop, .online and so on). Every registrant, by accepting the registrar's agreement, also agrees to submit to this procedure. That is what makes it effective: the decision is implemented directly by the registrar, with no court involved.

It is not a lawsuit. It is an administrative procedure, entirely written and online, decided by one or three independent panelists appointed by an accredited provider. Only two remedies exist: transfer of the domain to the complainant, or cancellation. No damages, no recovery of costs.

Some country-code domains (ccTLDs) have adopted the UDRP or a close variant; others have not. The two that matter most to an Italian business, .it and .eu, have their own procedures, covered further down.

The three elements of paragraph 4(a)

To win, you must prove all three elements set out in paragraph 4(a) of the Policy. Miss one, and the complaint fails.

1. The domain is identical or confusingly similar to a mark in which you have rights

You must hold rights in a trademark, registered or unregistered, and the domain must be identical or confusingly similar to it. The comparison is between the mark and the part of the domain before the extension, generally disregarding the extension itself. A domain that reproduces the mark with added generic words ("brand-shop", "brand-italy") or with typos is normally found confusingly similar. A registered mark makes this element close to a formality; an unregistered mark requires proof of recognition through sales figures, advertising, press coverage.

One important point: at this stage it does not matter where the mark is registered or when. What matters is holding it when you file. The "when" returns under the third element.

2. The registrant has no rights or legitimate interests in the domain

The burden here is particular. You must make out a prima facie case that the registrant has no entitlement to the name; the burden then shifts to them to show otherwise. Paragraph 4(c) of the Policy lists circumstances that establish a legitimate interest: use of the domain, before the dispute, for a bona fide offering of goods or services; being commonly known by the name; legitimate non-commercial or fair use without intent to divert consumers or tarnish the mark.

In practice: a parked domain with pay-per-click links, a domain inactive for years, a domain hosting a site that imitates yours, rarely conceal a legitimate interest. A domain matching the registrant's surname, or a dictionary word used in its ordinary meaning, can have strong defences.

3. The domain was registered and is being used in bad faith

This is the most delicate element, because the conjunction is "and": there must be bad faith both at registration and in use. Paragraph 4(b) lists four illustrative situations:

• the domain was registered primarily to sell it to the trademark owner or a competitor for more than out-of-pocket costs;
• it was registered to prevent the trademark owner from reflecting the mark in a domain, as part of a pattern of such conduct;
• it was registered primarily to disrupt a competitor's business;
• it is used to attract users for commercial gain by creating confusion with the mark.

The list is not exhaustive and panels weigh the circumstances as a whole. The most useful reference for how they decide is the WIPO Jurisprudential Overview 3.0, which summarises the prevailing view on dozens of recurring questions.

A practical corollary of the conjunctive requirement: if the domain was registered before your trademark existed or became known, proving bad-faith registration is normally very hard, because the registrant could not have targeted a mark that did not yet exist. Renewing the domain does not "reset" the date for this purpose. Conversely, if the domain was registered days after your public announcement or trademark filing, the inference of bad faith is strong.

Non-use (so-called passive holding) can also amount to bad-faith use where the mark is well known, the registrant conceals their identity and no good-faith use of the domain is plausible.

How the procedure unfolds

Stage	What happens	Indicative timing
Filing the complaint	The complainant submits the written complaint with evidence to the chosen provider and pays the fee	—
Review and lock	The provider checks formal requirements; the registrar locks the domain (no transfers)	a few days
Notification	The provider notifies the complaint to the domain holder	—
Response	The respondent may reply	20 days
Panel appointment	One or three panelists, depending on the parties' choices	a few days
Decision	The panel decides on the written record	normally within 14 days of appointment
Implementation	The registrar executes the transfer, unless the respondent files a court action within the deadline	10 business days after notification

Overall, filing to decision takes about two months on average. There is no internal appeal: a dissatisfied party can only go to a competent court, and if the respondent does so within the ten business days the transfer is suspended pending the outcome.

The language of the proceeding is, as a rule, the language of the domain's registration agreement, unless the parties agree otherwise or the panel decides differently. Check this early: a domain registered with a foreign registrar may mean a proceeding in a language other than yours.

Providers and costs

ICANN has accredited several providers to choose from. The most used are the WIPO Arbitration and Mediation Center in Geneva, the Forum (United States), the Czech Arbitration Court (CAC) and the Asian Domain Name Dispute Resolution Centre (ADNDRC). The complainant chooses; all apply the same Policy and Rules, with their own supplemental rules.

Fees vary by provider, number of domains and panel composition. At WIPO, the fee for a complaint covering 1 to 5 domains is USD 1,500 with a single panelist and USD 4,000 with a three-member panel; for 6 to 10 domains the single-panelist fee rises to USD 2,000. If the respondent elects a three-member panel, the difference is split. Always check the current amount on the WIPO schedule of fees.

On top of these come the costs of preparing the complaint, which is a technical document: rigid structure, word limits, documentary evidence organised into annexes. At NameSapiens, after a preliminary case assessment, complaints are prepared by our partner law firm; the decision to proceed remains yours, and it should rest on an honest estimate of the odds.

Before filing: assess and, where possible, negotiate

A well-built UDRP complaint often succeeds, but a weak one fails and can even lead to a finding of Reverse Domain Name Hijacking, that is, abuse of the procedure, where the complainant knew it had no case. Before spending, do three things.

Gather the evidence. Trademark certificate with filing date; domain history (registration dates, screenshots of the site over time, web archives); any correspondence with the holder, including sale offers; proof of current use (ads, competitor links, phishing).

Test the three elements one by one. Our free UDRP Pre-Check walks you through the key questions for each element and returns a strength assessment. It does not replace legal advice, but it tells you immediately whether you are about to spend money on a case with an obvious flaw, such as a domain registered ten years before your mark.

Consider negotiation. In many cases, especially where the holder is an investor who registered the name without a specific plan, an anonymous negotiated approach closes faster and cheaper than a proceeding. The UDRP remains your fallback if the asking price is unreasonable, and knowing that strengthens your hand at the table.

What if the domain is a .it or a .eu?

.it domains. Registro .it does not apply the UDRP but runs its own two-stage procedure. First you file an opposition with the Registry, which places the domain in "challenged" status and blocks transfers; the opposition must be renewed every 180 days and no more than twice. Then, if no agreement is reached, you start the reassignment before one of the dispute resolution providers (PSRD) accredited by the Registry. The elements are close to the UDRP's, with one notable difference in wording: the domain must have been "registered and maintained in bad faith". The respondent has 25 days to reply and the panel normally decides within 15 days of its constitution (deadlines run in working days). The procedure is open to parties from the European Economic Area, Switzerland, San Marino and Vatican City, or those acting on their behalf. Details and the PSRD list are on the Registry's website.

.eu domains. Disputes are decided by the Czech Arbitration Court under the ADR procedure established by EURid. The test is different and, for the complainant, more favourable: the domain must be identical or confusingly similar to a name in which a right is recognised under national or EU law, and it must have been registered without rights or legitimate interest or registered or used in bad faith. One of the two alternative conditions is enough. The respondent has 20 days to reply, the panel decides within 14 days, and the whole process takes about two months. Fees are published by the arbitration court: the standard single-panelist fee is EUR 1,300, with a EURid promotional discount in force at the time of writing; check the current amount before proceeding.

The principle that remains

All these procedures share one prerequisite: an earlier, provable trademark right. Whoever filed the mark before launching the name arrives at the complaint with a solid position and a certain date; whoever did not must reconstruct, after the fact, a reputation that is often hard to prove. If you are reading this guide before you have a problem, the most useful advice is simple: register the mark, then the defensive domains, and keep an eye on similar registrations. Recovery is possible, but prevention costs a tenth as much.