How to return a stolen domain through WIPO arbitration. Step-by-step instruction
So, your domain was stolen. You found this either in the morning when you checked the mail on your smartphone, or in the evening, when you saw someone else’s ad on your site, then you went to the admin panel, deciding that the site was hacked, but there wasn’t any advertising code there, and you realized that the DNS was rewritten to another server ...
you experience a whole gamut of feelings. Rage, because you are going to immediately punish scammers. Fear, because in the few hours that you think the site will be in their hands, they can fill it with trash that will fall into the index of search engines. Perplexed because you do not understand how they managed to do this.
You immediately write to the technical support of the registrar and you get an answer that the complaint has been received and will be considered in a timely manner.
An hour passes, another, but no answer. You call the hotline, where they inform you that the lawyers are considering your problem and will give an answer no later than tomorrow.
You are shocked, demand to connect you with the leadership, threaten with all earthly and heavenly punishment, 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 will receive a message that the domain is blocked and you need to contact the police on this issue.
A tired opera, having heard about domains, DNSs, hosting and other strange things and realizing that your business is somehow connected with computers, is trying to send you to the “K” office, but in the end I have to accept your application. But you are also going to the “K” department, and in a month you receive from both instances decisions to refuse to institute criminal proceedings.
Fraudsters behave impudently and, it seems, are not afraid of anything. They continue to advertise on your site and offer you to pay a decent amount for its return.
In the meantime, the “experts” from the forums advise you to contact Roskomnadzor, the Presidential Administration, ICAN, the media, and speak with knowledge of the matter exactly how they are obliged to help you.
However, there are only two real ways to return a domain. If it is registered in the “Russian” domain zones: .ru, .рф or .su - apply to a Russian court, and if both parties are organizations or individual entrepreneurs, then go to an arbitration court.
If the domain is “foreign”, then there is only one way out - to sue the arbitration of the World Intellectual Property Organization (WIPO). World Intellectual Property Organization, WIPO.
This is the only authority that can provide real assistance in returning the domain .
His competence includes resolving issues of contradictions between the rights of owners of trademarks and domains. Simply put, if you have a registered trademark, then you contact the WIPO Arbitration and, by its decision, a domain that is similar to the extent of confusion with your sign is transferred to you or its registration is canceled.
Therefore, if you have a trademark, you can only submit it to the arbitrators and justify the defendant's lack of legitimate interest in using the domain.
But what if you did not think in advance about registering it?
Especially for such cases, WIPO arbiters apply the concept of an unregistered trademark. You can prove its existence if you have owned the site for a long time, and it was visited by a large number of people who perceived you as a person providing them services or selling goods.
The time of ownership of the site is proved using the WHOIS service or a letter from the registrar.
To prove high attendance, you need to provide arbitration screenshots from analytics systems. It is better to use Google Analytics, but you can, of course, Yandex Metric or other services.
There are no specific figures, upon reaching which site traffic could be considered high. For example, the minimum number with which, as I know, it was possible to return the domain, amounted to two million visits in four years.
Proving the presence of an unregistered mark, one must take into account at least two features. Firstly, “descriptive” designations are considered as trademarks only if it is proved that they have acquired “distinctive ability”.
In other words, the owner of a domain whose name contains the word “vilka”, who sells cutlery that he produces through the site, can prove that he is entitled to an unregistered trademark only if he confirms that this word is a result of prolonged use in the minds of consumers it has become clearly associated precisely 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 a similar problem, since the word “vilka” is not a description of what artists are doing.
And, secondly, a trademark is always used for commercial activities, therefore, anyone who did not bother to register it in time will need to prove to the arbitration court that with the help of its website it made a profit or, in any case, tried to do it.
To do this, you can use screenshots from personal accounts of advertising systems, contracts with advertisers, etc.
And now the promised step-by-step instruction.
1. Before filing a lawsuit, you must pay a fee of $ 1,500 if you want one arbitrator to consider the lawsuit. But if the other side requires a trial of 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 we submit an application through the form on the websitewww3.wipo.int/amc-forms/en/udrp/eudrpcomplaint.jsp or send it to WIPO email. This is, of course, easier to do through the form, because all the necessary fields are provided in advance.
In it you indicate:
Too much to write about exactly how the domain was stolen, about the baseness and insidiousness of the defendant, about the importance of his project and generally about things that do not have legal significance for this dispute, is strongly discouraged. This will immediately give you a layman who does not understand who and why he writes.
The application is written in the language of the registration agreement posted on the website of the current registrar. That is, if you are lucky and the registrar turned out to be Russian, then the paperwork will be conducted in Russian. If not, get ready to write in English.
The application must be accompanied by documents and screenshots with the information to which you refer:
All important information must be provided in conjunction with the statement of claim upon first appeal. Arbitration is very bad for an additional document that you will want to provide later. In an extreme case, their appearance should be seriously justified.
3. The decision on whether a statement will be made must be made within 5 days. The huge advantage of WIPO arbitration is that after the application is submitted, the domain is immediately blocked. WIPO also asks the registrar for contacts and the name of the domain owner, however, the plaintiff is not provided with this information in all cases.
If there are deficiencies in the application, you are given another 5 days to resolve them.
4. The further progress of the case depends on the actions of the defendant. As a rule, there is no fierce resistance on his part, because if the domain was stolen by professional hackers, it makes no sense for them to fight for one stolen site.
Usually they do not respond to claims, do not participate in the process, and as a result you get your domain.
But if a domain is very dear to a hacker, then it cannot be ruled out that a professional lawyer will be hired by the defendant, so you need to be prepared to answer legal arguments, write reviews and additions to your application.
The whole process, starting with the filing of the statement of claim and ending with the return of the domain, takes on average about 4 months, after which the arbitration decision.
5. With this decision, you contact the registrar who has the domain. If the registrar is familiar with this procedure, then the transfer to your account takes about 10 business days, otherwise this process may take a while.
Take care of your usernames and passwords, do not fall for the tricks of social engineering and let this instruction never be useful to you.
you experience a whole gamut of feelings. Rage, because you are going to immediately punish scammers. Fear, because in the few hours that you think the site will be in their hands, they can fill it with trash that will fall into the index of search engines. Perplexed because you do not understand how they managed to do this.
You immediately write to the technical support of the registrar and you get an answer that the complaint has been received and will be considered in a timely manner.
An hour passes, another, but no answer. You call the hotline, where they inform you that the lawyers are considering your problem and will give an answer no later than tomorrow.
You are shocked, demand to connect you with the leadership, threaten with all earthly and heavenly punishment, 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 will receive a message that the domain is blocked and you need to contact the police on this issue.
A tired opera, having heard about domains, DNSs, hosting and other strange things and realizing that your business is somehow connected with computers, is trying to send you to the “K” office, but in the end I have to accept your application. But you are also going to the “K” department, and in a month you receive from both instances decisions to refuse to institute criminal proceedings.
Fraudsters behave impudently and, it seems, are not afraid of anything. They continue to advertise on your site and offer you to pay a decent amount for its return.
In the meantime, the “experts” from the forums advise you to contact Roskomnadzor, the Presidential Administration, ICAN, the media, and speak with knowledge of the matter exactly how they are obliged to help you.
However, there are only two real ways to return a domain. If it is registered in the “Russian” domain zones: .ru, .рф or .su - apply to a Russian court, and if both parties are organizations or individual entrepreneurs, then go to an arbitration court.
If the domain is “foreign”, then there is only one way out - to sue the arbitration of the World Intellectual Property Organization (WIPO). World Intellectual Property Organization, WIPO.
This is the only authority that can provide real assistance in returning the domain .
His competence includes resolving issues of contradictions between the rights of owners of trademarks and domains. Simply put, if you have a registered trademark, then you contact the WIPO Arbitration and, by its decision, a domain that is similar to the extent of confusion with your sign is transferred to you or its registration is canceled.
Therefore, if you have a trademark, you can only submit it to the arbitrators and justify the defendant's lack of legitimate interest in using the domain.
But what if you did not think in advance about registering it?
Especially for such cases, WIPO arbiters apply the concept of an unregistered trademark. You can prove its existence if you have owned the site for a long time, and it was visited by a large number of people who perceived you as a person providing them services or selling goods.
The time of ownership of the site is proved using the WHOIS service or a letter from the registrar.
To prove high attendance, you need to provide arbitration screenshots from analytics systems. It is better to use Google Analytics, but you can, of course, Yandex Metric or other services.
There are no specific figures, upon reaching which site traffic could be considered high. For example, the minimum number with which, as I know, it was possible to return the domain, amounted to two million visits in four years.
Proving the presence of an unregistered mark, one must take into account at least two features. Firstly, “descriptive” designations are considered as trademarks only if it is proved that they have acquired “distinctive ability”.
In other words, the owner of a domain whose name contains the word “vilka”, who sells cutlery that he produces through the site, can prove that he is entitled to an unregistered trademark only if he confirms that this word is a result of prolonged use in the minds of consumers it has become clearly associated precisely 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 a similar problem, since the word “vilka” is not a description of what artists are doing.
And, secondly, a trademark is always used for commercial activities, therefore, anyone who did not bother to register it in time will need to prove to the arbitration court that with the help of its website it made a profit or, in any case, tried to do it.
To do this, you can use screenshots from personal accounts of advertising systems, contracts with advertisers, etc.
And now the promised step-by-step instruction.
1. Before filing a lawsuit, you must pay a fee of $ 1,500 if you want one arbitrator to consider the lawsuit. But if the other side requires a trial of 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 we submit an application through the form on the websitewww3.wipo.int/amc-forms/en/udrp/eudrpcomplaint.jsp or send it to WIPO email. This is, of course, easier to do through the form, because all the necessary fields are provided in advance.
In it you indicate:
- that you have the right to an unregistered trademark and provide evidence of this,
- that the defendant does not have rights and legal interests in using the domain,
- that he acts in bad faith, that is, he registered it with an unfair purpose.
Too much to write about exactly how the domain was stolen, about the baseness and insidiousness of the defendant, about the importance of his project and generally about things that do not have legal significance for this dispute, is strongly discouraged. This will immediately give you a layman who does not understand who and why he writes.
The application is written in the language of the registration agreement posted on the website of the current registrar. That is, if you are lucky and the registrar turned out to be Russian, then the paperwork will be conducted in Russian. If not, get ready to write in English.
The application must be accompanied by documents and screenshots with the information to which you refer:
- screenshot of the whois service indicating the new owner, even if his name is Private Whois,
- a certificate from the registrar indicating that it was you who owned the domain before its abduction,
- screenshot from your Google Analytics account or other statistics system,
- screenshots from personal accounts of advertising systems,
- screenshots from archive.org if you are linking to your site’s history.
All important information must be provided in conjunction with the statement of claim upon first appeal. Arbitration is very bad for an additional document that you will want to provide later. In an extreme case, their appearance should be seriously justified.
3. The decision on whether a statement will be made must be made within 5 days. The huge advantage of WIPO arbitration is that after the application is submitted, the domain is immediately blocked. WIPO also asks the registrar for contacts and the name of the domain owner, however, the plaintiff is not provided with this information in all cases.
If there are deficiencies in the application, you are given another 5 days to resolve them.
4. The further progress of the case depends on the actions of the defendant. As a rule, there is no fierce resistance on his part, because if the domain was stolen by professional hackers, it makes no sense for them to fight for one stolen site.
Usually they do not respond to claims, do not participate in the process, and as a result you get your domain.
But if a domain is very dear to a hacker, then it cannot be ruled out that a professional lawyer will be hired by the defendant, so you need to be prepared to answer legal arguments, write reviews and additions to your application.
The whole process, starting with the filing of the statement of claim and ending with the return of the domain, takes on average about 4 months, after which the arbitration decision.
5. With this decision, you contact the registrar who has the domain. If the registrar is familiar with this procedure, then the transfer to your account takes about 10 business days, otherwise this process may take a while.
Take care of your usernames and passwords, do not fall for the tricks of social engineering and let this instruction never be useful to you.