When to File a URS Complaint Instead of -- or in Addition to -- a UDRP Complaint

The Uniform Rapid Suspension Systems (URS) -- the dispute policy that applies to new global top-level domain names (gTLDS) -- is often ridiculed as a less-attractive alternative to the longstanding Uniform Domain Name Dispute Resolution Policy (UDRP). But, it actually has some advantages.

Unlike the UDRP, the URS doesn't allow a winning complainant to obtain the transfer of a domain name -- only a limited suspension of it. Plus, as I've written before (see "Why the URS is (So Far) an Unpopular Domain Name Dispute Policy"), the URS is only for “clear cases of trademark abuse” with no “open questions of fact”; and, it has much stricter rules of procedure.

In other words, it's actually more challenging to win a URS complaint and, even if you prevail, the remedy is more limited than in a UDRP proceeding.

Still, there are situations in which the URS is a better option than the UDRP.

URS Filing Fees and Legal Fees are Less Expensive Than the UDRP

Clearly, the URS is much less expensive than the UDRP. The two largest UDRP service providers, the World Intellectual Property Organization (WIPO) and the Forum (formerly the National Arbitration Forum), charge filing fees for UDRP complaints that start at, respectively, $1,500 and $1,350. By comparison, the Forum's URS fees start at only $375. (WIPO does not offer URS services.)

Plus, because the URS is only available for straightforward disputes and its rules severely limit the size of complaints, legal fees for URS cases are often only a fraction of those for UDRP cases.

URS Complaints are Always Filed in English

The UDRP rules state that "the language of the administrative proceeding shall be the language of the Registration Agreement, subject to the authority of the Panel to determine otherwise, having regard to the circumstances of the administrative proceeding." So, except under some limited situations, the registrar's registration agreement will determine the language in which a UDRP complaint must be filed. While many of the largest registrars (such as GoDaddy and Network Solutions) have English agreements, many others do not. As a result, it may be impossible (or, at least, more challenging and uncertain) to file a UDRP complaint against some registrants in English.

On the other hand, the URS rules (PDF) clearly state that "[t]he Complaint shall be submitted in English." No exceptions exist, and I am not aware of any authority that would allow another language for the complaint, or any URS proceeding in which that has ever occurred.

Therefore, English-speaking trademark owners may find the URS more attractive, because translating a complaint may be impractical or expensive (which would diminish the cost-savings feature of the URS described above).

The URS Process is Quicker Than the UDRP

The URS was envisioned as a much quicker option than the UDRP. In reality, though, it is not as quick as many trademark owners would like.

Still, the URS can be very quick. The Forum's timeline shows that URS determinations should be issued within 21 days after a complaint has been filed. And, many determinations have been issued much more quickly, with the average time to a default determination being only 18 days.

By comparison, the UDRP rules envision a timeline of at least 34 days from filing a complaint to a decision. And, in practice, given delays that can occur in commencing the proceeding, appointing the panel and notifying the decision -- as well as common issues such as amendments, supplemental filings and even extensions of deadlines -- it is typical to expect a decision in about 60 days.  Plus, UDRP decisions are not implemented until the expiration of a waiting period of an additional 10 business days.

As a result, if a domain name is actually causing harm to a trademark owner (and not just a domain name that a trademark owner would like to have), then time may be of the essence -- making a URS complaint the better choice.

How the URS and UDRP Can Work Together

While this discussion shows that the URS has certain advantages over the UDRP, it's actually possible to consider both dispute procedures under the right circumstances. Doing so might be an option if all of the following apply:

  • The disputed domain name is a new gTLD.  (The URS and the UDRP apply to new gTLDs, but the URS does not apply to <.com> and most of the traditional gTLDs.)
  • The dispute is appropriate for the URS process.  (Remember that the URS has a high burden of proof -- “clear and convincing evidence.”)
  • The disputed domain name is causing damage to the trademark owner.  (If so, a URS could get the domain name suspended quickly -- in about 18 days, as shown above.)
  • The trademark owner wants to use the disputed domain name or permanently keep it from being used by anyone else.  (Remember that the UDRP, unlike the URS, allows a domain name to be transferred to the complainant.)

In other words, the URS can act as a sort of preliminary injunction, possibly allowing a trademark owner to quickly get a domain name suspended -- and later (at any time during the suspension period) follow-up with a UDRP complaint to seek transfer of the domain name.

Of course, this two-step process is more expensive than taking only the URS or the UDRP route. But it also offers the best of both worlds and should be given serious consideration when the facts, law and desired relief are appropriate.