One of the most obvious limitations of the new Uniform Rapid Suspension System (URS) is the remedy for a trademark owner: A disputed domain name can only be temporarily suspended, not transferred. (By contrast, the Uniform Domain Name Dispute Resolution Policy (UDRP) allows a winning complainant to get a domain name transferred to it.)
The trade-off has been seen as a compromise: Since URS proceedings are quicker and less expensive than the UDRP, the remedy should be more limited.
While the URS has not yet proven to be very popular, most trademark owners who have invoked it have found success. That is, the overwhelming majority of disputed domain names have been suspended.
But, because the suspension is only temporary -- until the disputed domain name is due to expire, or one year thereafter, if the complainant is willing to pay for a renewal -- one unknown question has been: What happens to a domain name after the URS suspension expires?
Now, as the first domain names suspended in URS proceedings are expiring, we are finally getting some answers.
I looked at the first 100 domain names suspended at the Forum (the most popular URS service provider) under the URS. While almost half (49) of the domain names are still suspended (or in the "pending delete" or "redemption period" status following a suspension), it's interesting to see what's happened (so far, at least) with the domain names that have become available post-URS suspension.
This chart summarizes what I found:
And here's what it means:
- The bulk (27) of the previously suspended domain names are not currently registered to anyone. In other words, after the URS suspensions expired and the domain names became available for registration (to anyone) again, no one has chosen to pick them up. On the one hand, this should be encouraging to the trademark owners who filed the URS complaints in the first place, because it shows that a suspended domain name is not necessarily an obvious target to be picked up by anyone at the first available opportunity. On the other hand, any of these domain names could be registered by anyone at any time, so they still pose a future risk (again) to the trademark owners who once got them suspended.
- Many (14) of the previously suspended domain names are now on the "Donuts Protected Marks List," a program offered by one of the largest new registry operators that allows trademark owners to pay a fee to prevent their trademarks from being registered in the Donuts-operated top-level domains. Presumably, the trademark owners who previously filed URS complaints for these domain names later learned about the DPML or decided that the process (and fee) was worthwhile.
- Four of the previously suspended domain names are now registered or controlled by the relevant trademark owner, that is, the complainant who filed the URS complaint in the first place. This would seem to indicate that the trademark owner found some value in the disputed domain name or, at least, wanted to keep the domain name off the market to avoid potential future problems (necessitating another URS complaint, a UDRP complaint, or other action), and the trademark owner was able to register the domain name before anyone else.
- Three of the previously suspended domain names have been registered by someone other than the trademark owner. Though small (at least as of now), this is perhaps the most interesting -- and troubling -- status. In other words, even after winning a URS proceeding and getting a domain name suspended, a trademark owner is now facing its original problem once again. The domain name is no longer suspended and instead is in the hands of a third party who may use it in a manner that causes headaches for the trademark owner. As a result, the trademark owner may encounter a sense of deja vu and be in the position of incurring the time and expense of filing yet another URS complaint (or taking other legal action) for the same domain name.
So, what are the lessons to be learned? While it's still very early, one thing is clear: The URS is truly a temporary or interim solution and is not a cure-all for cybersquatting in the new generic top-level domains (gTLDs). Unless a trademark owner takes some action post-suspension, a previously suspended domain name may rise again.
