In this domain name dispute case study video, I explain how Warner Bros. lost a decision under the Uniform Rapid Suspension System (URS) for the domain name <scoobnb-doo.xyz>, even though it was used in connection with a cryptocurrency website that included images of the Scooby-Doo cartoon character.
The decision is an important reminder about the challenges in filing and winning URS decisions, even for sophisticated trademark owners.
According to the URS decision, Warner Brothers’ Hanna-Barbera subsidiary owns the Scooby-Doo trademark, which it said has been in use since at least 1969 in connection with broadcasting, media and entertainment services. The disputed domain name, <scoobnb-doo.xyz>, was created in 2021.
Like the Uniform Domain Name Dispute Resolution Policy (UDRP), the URS includes a three-part test that a trademark owner has to satisfy. But, unlike the UDRP, the URS says that it was designed for “only clear cases of trademark abuse.” As a result, the URS requires trademark owners to establish their cases with “clear and convincing evidence” – a very high burden of proof – and they have only 500 words to do so.
When I file URS complaints for my clients, I often find myself cutting out every unnecessary word to meet this strict requirement, which doesn’t allow much room at all for factual explanations or legal arguments. By comparison, a typical UDRP complaint may allow up to 5,000 words, so the difference is obviously significant.
Perhaps because of this limitation, Warner Bros. apparently didn’t say much in its URS complaint, which ultimately proved fatal to its effort.
After quickly finding that Warner Bros. had established rights in the SCOOBY-DOO trademark and that the <scoobnb-doo.xyz> domain name was confusingly similar to it under the first element of the URS, the expert turned to the second element, whether the registrant of the domain name had any rights or legitimate interests in it. And here’s what the decision says on that part of the test:
Under the URS, the Complainant is held to [a] high standard of proof of clear and convincing evidence. Contrary to the UDRP, the URS is a unique process, to be used in the most blatant domain name cybersquatting with a short 500-words limit for the Complaint. The Complainant must within the limits of the URS explain each of the three elements necessary to be satisfied under the URS. In the present case, Complainant failed to provide any explanation, why Registrant has no legitimate right or interest to the disputed domain name. Failing to completely argue the second element, the Complainant failed to meet the necessary requirements of [the second element].
In other words, simply asserting that a domain name registrant lacks rights or legitimate interests, without providing any factual or legal explanation, is insufficient. Maybe Warner Bros. thought it was obvious, or maybe Warner Bros. had already reached the 500-word limit in other parts of its complaint. But whatever the reason, as this decision makes clear, conclusory allegations alone are insufficient under the URS.
As I explain in the video, the URS examiner reminds Warner Bros. that the outcome of a URS proceeding is without prejudice to other actions, such as filing a complaint in court or under the UDRP. So, eventually, Warner Bros. may be successful, but its effort under the URS clearly was not.
The outcome in this case is exactly why I often advise my clients against filing URS complaints in the first place. They’re difficult to win, and the time and effort and money are usually better spent on the UDRP.
(For a link to the URS decision in this case, see the description in my video.)
