ICANN’s newest domain name dispute policy, the Uniform Rapid Suspension System (URS), is proving to be an unpopular enforcement tool for trademark owners, despite the growth of registrations in the new generic top-level domains (gTLDs) to which it applies. Instead, trademark owners are relying on the proven Uniform Domain Name Dispute Resolution Policy (UDRP). The reasons are likely attributable to a number of factors, including lack of familiarity, a high burden of proof, and a limited remedy. When the URS was first implemented in 2013, it was envisioned as a quicker and less expensive alternative to the UDRP -- which, when it went into effect in 1999, was envisioned as a quicker and less-expensive alternative to litigation. While the UDRP has proven to be the preferred option for most trademark owners to resolve domain name disputes and has resulted in tens of thousands of cases, the URS is seldom invoked. As a result, the URS has failed to gain traction and is often overlooked.
URS and UDRP by the Numbers
A review of the number of URS cases filed since 2013 demonstrates its decided lack of popularity. At the Forum (formerly the National Arbitration Forum), the leading provider of URS services, only 529 cases were filed in the past three years. By comparison, the Forum reported that it handled 1,557 UDRP disputes in just one year (2014). Other providers of the URS include the Asian Domain Name Dispute Resolution Centre (ADNDRC), which has published a grand total of 31 URS determinations, and Italy’s MFSD, which has published only six determinations. See ADNDRC URS Determinations (last visited July 12, 2016) and MFSD URS Determinations (last visited July 12, 2016).
Notably absent as a URS provider is the World Intellectual Property Organization (WIPO), which helped draft the UDRP and today handles more domain name disputes than any other entity. WIPO has criticized the URS since before its launch, stating in 2012 that the URS would be “significantly more complex than the UDRP procedurally, offering a lighter remedy (reversible on appeal), for a price target of less than a third of the UDRP. This is neither realistic nor optimal.” WIPO’s absence as a URS provider likely has contributed to its lack of popularity, at the very least because the leading domain name dispute provider is not promoting it.
A Comparison of the URS and UDRP
The URS applies to all of the so-called “new” gTLDs, that is, those launched following ICANN’s 2012 application process. It does not apply to the popular “legacy” gTLDs such as .com, although at least one country-code registry, .pw (Palau), has adopted it, and .us (United States) has adopted a variation of it. See Forum Country-code TLDs (ccTLDs), (last visited July 12, 2016). Plus, at least three of the so-called older “sponsored” TLDs -- .cat, .pro, and .travel -- have adopted the URS in the recent renewals of their registry agreements. See, e.g., .cat Registry Agreement, (last visited July 12, 2016). In any event, the URS is not the only dispute policy that applies to the new gTLDs, as the UDRP remains an option for those as well.
The substantive test for the URS is similar, but not identical, to the UDRP. To prevail in a URS proceeding, a trademark owner must prove all three of the following:
- the registered domain name is identical or confusingly similar to a word mark: (i) for which the complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
- that the registrant has no legitimate right or interest to the domain name.
- that the domain was registered and is being used in bad faith.
URS Procedure, Paragraph 1.2.6 (Mar. 1, 2013).
The key difference between the URS and the UDRP test can be found in the first element: while the UDRP applies broadly to any trademark or service mark in which the complainant has rights, the URS is much more limited.
For example, trademark owners have frequently prevailed in UDRP disputes involving common law trademarks, but unregistered marks are unacceptable in URS proceedings unless they have been “validated through court proceedings” or are protected by an applicable statute or treaty. URS Procedure, Paragraph 18.104.22.168. As a result, the URS proceeding is often unavailable to the owners of unregistered trademarks.
The larger challenges for trademark owners in bringing a URS proceeding are procedural. First, the burden of proof in a URS proceeding is “clear and convincing evidence,” as the URS is only intended for use in “clear cases of trademark abuse.” URS Procedure, Paragraph 8.5.
In contrast, prior UDRP decisions have established a much lower evidentiary standard: “The general standard of proof under the UDRP is ‘on balance’ – often expressed as the ‘balance of probabilities’ or ‘preponderance of the evidence’ standard.” See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition (last visited July 12, 2016). “Under this standard, an asserting party would typically need to establish that it is more likely than not that the claimed fact is true.” Id.
In addition to the URS’s higher burden of proof, trademark owners face a 500-word limit to any explanatory statement submitted with the complaint. See URS Procedure, Paragraph 1.2.7. In contrast, WIPO UDRP complaints may be up to 5,000 words. See World Intellectual Property Organization Supplemental Rules for Uniform Domain Name Dispute Resolution Policy, Paragraph 10 (July 31, 2015). The extremely short word limit for URS proceedings means that trademark owners will have difficulty crafting factual and legal arguments of any substance.
Further, while UDRP providers and panels sometimes allow “supplemental filings” (such as a submission from a complainant replying to a response), the record in a URS proceeding is strictly limited to the contents of the complaint and response. See URS Procedure, Paragraph 9.1. Finally, while inadequacies in UDRP complaints are often corrected before formal notification, the URS provides no such opportunity to correct inadequacies in the complaint. See URS Procedure, Paragraph 3.3.
The Limited URS Remedy
Perhaps the greatest limitation of the URS is its remedy. Unlike the UDRP, where a successful trademark owner can have a disputed domain name canceled or transferred, the URS only allows for the temporary suspension of a disputed domain name until the expiration of the current registration period, with the option to extend the registration period for one additional year. See URS Procedure, Paragraphs 10.2–10.3.
As a result, a trademark owner cannot obtain control of a disputed domain name in a URS proceeding. Once the suspension period expires, the disputed domain name becomes available for registration again on a first-come, first-served basis, potentially allowing another cybersquatter to register it before the trademark owner.
Advantages of the URS
Despite its limitations, the URS offers some advantages over the UDRP. Unlike the UDRP, the URS includes a system for appealing decisions. Under Paragraph 6.4 of the URS Procedure, a losing registrant who fails to file a response can seek de novo review for up to six months (plus an additional six-month extension), and under Paragraph 12 either party can seek a de novo appeal of the determination within 14 days.
In addition, the URS includes important provisions to deter inappropriate complaints. While the UDRP allows panels to find that a trademark owner has engaged in “reverse domain name hijacking” if it used the UDRP in a bad faith to attempt to deprive a registered domain-name holder of a domain name, such a finding is without consequence other than, perhaps, public embarrassment. See Rules for Uniform Domain Name Dispute Resolution Policy, Paragraph 1 (approved Sept. 28, 2013).
Under the URS, however, a trademark owner found to have abused the process may be barred from using the URS for one year or even permanently. See URS Procedure. To date, though, it appears as if this punishment has never been handed down.
The most notable advantages of the URS are the low cost and speed with which decisions are issued. For example, the Forum’s fee schedule for a URS complaint starts at $375, compared to $1,300 for the UDRP. See Forum Glossary and FAQ (last visited July 12, 2016). URS determinations are being issued much more quickly, typically 17 days after filing, compared with approximately two months for UDRP decisions.
While the URS and UDRP are often thought of as separate (“either-or”) legal remedies, they can be used in conjunction. Specifically, Paragraph 13 of the URS Procedure states that “[t]he URS Determination shall not preclude any other remedies available to the appellant, such as UDRP.”
At least one trademark owner has invoked both dispute policies against the same registrant with respect to the same domain names by first filing a URS complaint to have the domain names at issue suspended (see Yves Saint Laurent v. Khita Kongsansatien, NAF Claim No. 1565626 (July 23, 2014), followed by a UDRP decision ordering transfer of the domain names. See Yves Saint Laurent v. Khita Kongsansatien, WIPO Case No. D2016-0496 (April 18, 2016). In this respect, the URS can provide an effective complement to the UDRP where fast action is required to protect brand owners and consumers from potential harm.
Review of the URS and All Rights Protection Mechanisms
At this time, the long-term future of the URS is unclear, not only because of its failure to be invoked with much frequency by trademark owners, but also because it is currently under review by an ICANN working group. The Generic Names Supporting Organization (GNSO) Council is conducting a “Policy Development Process (PDP) to Review All Rights Protection Mechanisms (RPMs) in All Generic Top-Level Domains (gTLDs)." See http://newgtlds.icann.org/en/reviews/cct/rpm (last visited July 12, 2016).
Brand owners and trademark counsel who are interested in helping to shape the review of all RPMs (including the URS) are encouraged to volunteer for the recently formed working group. Additional information about the working group is available at http://www.icann.org/news/announcement-2016-03-21-en.
This blog post was originally published as "URS vs. UDRP: The Heavyweight Is Winning" in the August 1, 2016, edition of the International Trademark Association's INTA Bulletin.