How to get back a stolen domain name through WIPO arbitration

Started by Novel Web Solution, Aug 17, 2022, 10:41 AM

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Novel Web SolutionTopic starter

So, your domain name was stolen. You discovered this either in the morning when you checked your email on your smartphone, or in the evening when you saw somebody else's ad on your website, then you went to the admin panel, thinking that the site had been hаcked, but the ad code was not there, and you realized that the DNS was rewritten to another server.



You experience a whole range of feelings. Rage, since you are going to instantly punish the scammers. Fear, because in the few hours that you think the website will be in their hands, they can fill it with junk that will get into the search engine index. Bewilderment, since you do not understand how they managed to do that.

You instantly write to the technical support of the registrar and receive a response that the complaint has been received and will be considered in a timely manner.

An hour passes, then another, but there is no answer. You call the hotline, where you are informed that lawyers are considering your problem and will give you an answer no later than tomorrow.

You are shocked, you demand to be connected with the management, threaten with all earthly and heavenly punishments, shout about the importance of your project and millions of deceived users, but in the end you agree to wait until the morning.

By the evening of the next day, you receive a message that the domain name is blocked and you need to contact the police about this issue.

The tired operator, having heard about domains, DNSs, hosting and other strange things, and realizing that your business is somehow connected with computers, tries to send you to the "K" department, but in the end he is still forced to accept your application. But you also go to department "K", and a month later you receive from both instances decisions on refusal to initiate a criminal case.

The scammers behave arrogantly and seem to be afraid of nothing. They continue to advertise on your site and offer you to pay a hefty sum to get it back.


However, there are only two real ways to return a domain.

If the domain is "foreign", then there is only one way out - to file a claim in the arbitration of the World Intellectual Property Organization (WIPO).
This is the only body that can provide real assistance in returning the domain.


Its competence includes resolving issues of conflicts between the rights of trademark and domain name owners. Simply put, if you have a registered trademark, then you apply to the WIPO Arbitration and, according to its decision, the domain, which is confusingly similar to your mark, is transferred to you or its registration is canceled.
Therefore, if you have a trademark, you only have to submit it to the arbitrators and justify the defendant's lack of a legitimate interest in using the domain.

But what if you have not thought about registering it in advance?
Especially for such cases, WIPO arbitrators apply the concept of an unregistered trademark. You can prove its existence if you owned the site for a long time, and it was visited by a large number of people who perceived you as a person providing services to them or selling goods.

Time of ownership of the site is proven using the WHOIS service or a letter from the registrar.
To prove high attendance, you need to provide arbitration with screenshots from analytics systems. It is better to use Google Analytics or other services.

There are no specific figures, upon reaching which the site traffic could be considered high. For instance, the minimum number that I know of to get a domain back was two million hits in four years.

When proving the existence of an unregistered mark, at least two features must be taken into account. First, "descriptive" signs are only considered trademarks if it can be shown that they have acquired "distinctiveness".

In other words, the owner of a domain with the word "vilka" in its name, selling cutlery that he makes through the website, will be able to prove that he has the right to an unregistered trademark only if he confirms that this word is the result of long-term use has become in the minds of consumers clearly associated with its products and is no longer considered by them simply as the name of the product.

But a theater studio offering its services on a site with the same address will not have such a problem, since the word "vilka" is not a description of what artists do.

And, secondly, a trademark is always used for commercial activities, so those who did not bother to register it in time will need to prove to arbitration that they made a profit using their website or, in any case, tried to do so.
To do this, you can use screenshots from personal accounts of advertising systems, contracts with advertisers, etc.


And now the promised step-by-step instructions.

1. A $1,500 fee must be paid before filing a claim if you wish to have a single arbitrator hear the claim. However, if the other party requests that the case be heard by three arbitrators, then you will need to pay an additional $500. Payment is possible by credit card through the WIPO website by specifying the domain name.

2. Then submit the application through the form at www3.wipo.int/amc-forms/en/udrp/eudrpcomplaint.jsp or send it to WIPO email. Of course, it is easier to do this through the form, since all the necessary fields are provided there in advance.

In it you specify:

    that you have the right to an unregistered trademark and provide evidence of that,
    that the defendant has no rights and legitimate interests in using the domain name,
    that he acts in bad faith, that is, he registered it with an unfair purpose.


Too much writing about exactly how the domain was stolen, about the meanness and deceit of the defendant, about the importance of his project, and in general about things that have no legal significance for this dispute, is categorically not recommended. This will instantly betray you as a non-professional who does not understand to whom and why he is writing.

The application is written in the language of the registration agreement posted on the site of the current registrar.

Documents and screenshots with the information you refer to must be attached to the application:

    screenshot of the whois service indicating the new owner, even if his name is Private Whois,
    a certificate from the registrar indicating that you were the owner of the domain before it was stolen,
    screenshot from Google Analytics account or other statistics system,
    screenshots from personal accounts of advertising systems,
    screenshots from archive.org if you're referring to your site's history.


All important information must be provided along with the statement of claim at the first contact. Arbitration is very hard on additional documents that you want to provide later. As a last resort, their appearance should be seriously justified.

3. A decision on whether the application will be accepted must be made within 5 days. A huge advantage of WIPO arbitration is that once the application is submitted, the domain is instantly blocked. WIPO also asks the registrar for contacts and the name of the owner of the domain, however, this information is not provided to the claimant in all cases.

If there are deficiencies in the application, you are given another 5 days to correct them.

4. Further development of the case depends on the actions of the defendant. As a rule, there is no fierce resistance on his part, since if the domain was stolen by professional hаckers, it makes no sense for them to fight for one stolen website.
Usually they do not respond to claims, do not participate in the process in any way, and as a result, you get your domain name.

But if the domain is very dear to the hаcker, then it cannot be ruled out that a professional lawyer will be hired by the defendant, so you need to be prepared to respond to legal arguments, write reviews and additions to your application.

The entire process, from filing a claim to returning a domain name, takes about 4 months on average, after which arbitration makes a decision.

5. With this solution, you contact the registrar who owns the domain name. If the registrar is familiar with this procedure, then the transfer to your account takes approximately 10 business days, otherwise this process may be delayed.

Take care of your logins and passwords, do not fall for the tricks of social engineering, and may that instruction never be useful to you.

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refkaz

The domain may not be used for the website at all, but can be used, for instance, for corporate or personal mail. Or not used at all and not even delegated. At the same time, there will be no history other than WHOIS, and, surely, there will be no attendance.
The domain name of the author of the previous topic was taken away under false documents. What does registered or unregistered trademarks, popularity, etc. have to do with a knowingly illegal transfer of a domain name?
It seems to me that in situations forcing crime, there should be a more direct path.
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jeyavinoth

The ICANN site provides information on 5 such (currently operating) organizations - www.icann.org/resources/pages/providers-6d-2012-02-25-en, not a single WIPO is alive.

Well, for the sake of accuracy, it should be borne in mind that not every  falls under the UDRP and WIPO. For a list of domains by country covered by the UDRP, see www.wipo.int/amc/en/domains/cctld. As far as I remember, UDRP does not apply to the same domain names in Armenia (.am).
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