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.

What Google Will -- and Won't -- Do About Trademarks in Ads

Trademark owners have long been annoyed by how other people and companies use their trademarks online, and one particular source of annoyance is with Google's "AdWords" program.

The issue: Who can use a trademark as a Google search term, and who can use that trademark in a Google search ad?

These questions raise interesting legal issues that courts continue to address. But Google's position is, for the most part, clear. And it's all spelled out in Google's "AdWords Trademark Policy."

Still, confusion often arises because Google draws a distinction between whether the trademark is used as a search term or whether it appears in a Google AdWords advertisement; whether it appears in a link (URL) in the advertisement; whether the advertiser is a reseller of the goods or services bearing the trademark; whether the advertiser provides an informational site about the trademarked goods or services; and where the advertising campaign is targeted.

In other words, Google's policy may be clear -- but it's not necessarily succinct.

And, Google is hesitant to take action, as the search engine leader has made clear:

Google takes allegations of trademark infringement very seriously and, as a courtesy, we investigate matters raised by trademark owners. However, because Google is not a third-party arbiter, we encourage trademark owners to resolve their disputes directly with the advertisers, particularly because the advertisers may have similar ads running through other companies' advertising programs.

Still, Google takes the following approach to trademarks and AdWords -- at least for ads targeting U.S. users -- in response to objections filed via its Trademark Complaint Form:

 

  • If the trademark is simply being used as a search term, Google says that it "will not investigate or restrict the use of trademark terms in keywords, even if a trademark complaint is received."
  • If the trademark appears within the ad text, Google says that it "will investigate and may restrict the use" of the trademark. However, resellers and informational sites (as defined by Google) may be allowed.
  • If the trademark appears only in a link (URL) in the Google ad, Google says that it "will not investigate and restrict use of the trademark in display URLs because the presence of trademarked term within a URL may not necessarily constitute trademark use, such as in the case of post-domain paths or subdomains."
  • If the trademark appears in an "organic" Google search result (that is, not an advertisement as part of Google's AdWords program), then Google says that trademark owners must "contact the site owner directly."

 

Clearly, Google is not eager to restrict its advertisers' activities (after all, these advertisers are Google's prominent source of revenue), though it will do so under limited circumstances.

A trademark owner's best approach to dealing with problematic Google ads is to evaluate the scope of the problem; complain to Google when appropriate (but be sure to provide accurate information or risk getting no help from Google -- or, even worse, see your own ads removed); and contact advertisers directly (because Google's complaint process is not the only course of action).

How to Stay Informed About Domain Name Dispute Decisions

Reading domain name dispute decisions is certainly not for everyone. But for those, like me, who want to stay on top of trends in this area of the law, it's an important and highly informative task.

That's why I review these decisions every day. And you can, too.

Fortunately, it's not difficult to follow domain name disputes -- if you know where to look. Here are the easiest ways to keep informed about new decisions from all of the ICANN-approved dispute resolution service providers for the Uniform Domain Name Dispute Resolution Policy (UDRP) and the Uniform Rapid Suspension System (URS):

 

  • The World Intellectual Property Organization (WIPO) maintains a "Subscribe to WIPO Newsletters" page (www3.wipo.int/newsletters/en/) that includes a check box for "Domain Name Decisions." E-mails contain links to new decisions under the UDRP and other domain name dispute policies managed by WIPO, including many ccTLDs. WIPO also publishes a list of all decisions at www.wipo.int/amc/en/domains/casesx/all.html.
  • The National Arbitration Forum (NAF) has a "Domain Name Decisions Daily Feed" page (dailymail.adrforum.com) with a simple form to receive a daily e-mail update with UDRP and URS decisions, as well as additional policies managed by NAF, including the usDRP (for .us domain names). Decisions also can be searched at www.adrforum.com/SearchDecisions.

Why 'Generic' Domain Names are Inappropriate for UDRP Complaints

A domain name that contains only a common or "dictionary" word (sometimes referred to as a "generic domain name" -- though not to be confused with a generic top-level domain) is often a poor candidate for a UDRP complaint, as decisions repeatedly remind us.

Here are some reasons why UDRP decisions involving a single, common word are won by the registrant. That is, the trademark owner who filed the complaint lost, and the registrant was allowed to retain the domain name.

The Complainant lacks trademark rights.

Example: In Inter123 Corporation v. Lawrence darwish / urbbana, NAF Claim No. 1557370, the Complainant argued that it tried unsuccessfully to purchase the disputed domain name <mobile.co> from the Respondent, and that the Respondent reneged after agreeing to sell it for $59,000. The Respondent said that the dispute was not appropriate for the UDRP and that "pending legal proceedings... involve the same issue."

The UDRP Panel found that the Complainant's trademark applications were only pending; were subject to "resistance" and chosen because they were "entirely apt to describe the character of the [Complainant's] services"; and that the Panel was "not able to conclude that Complainant has common law trademark rights." As a result, the Complainant failed the threshold requirement of every UDRP complaint.

The domain name doesn't target the Complainant.

Example: In Barium AB v. CDN Properties Incorporated, WIPO Case No. D2014-1541, the Complainant was a Swedish company that owned the domain name <barium.se>. The Respondent used the disputed domain name <barium.com> to "host[] advertising links" and in the UDRP proceeding referred to "the generic character of the word 'Barium' being a chemical element of the Mendeleev Periodic Table of Elements No. 56 with the 'Ba' code as well as the Latin name for the southern Italian city Bari."

In its decision, the UDRP panel said that it was "unable to find that the Respondent was aware of the [Complainant's] Trademark and/or the Complainant's business when it registered the disputed domain name" and that it was "also unable to find that the Respondent is trying to take advantage of the Trademark in order to draw traffic to its website, especially considering the fact that the disputed domain name does not appear to have been used to offer goods or services which are similar to or compete with the Complainant's services."

The Respondent's domain name registration predates the Complainant's trademark rights.

Example: In Kite Solutions, Inc. v. Brandon Abbey / Escrow.com, NAF Claim No. 1609855, the Complainant claimed that it owned a federal trademark registration for the word KITE for use in connection with "software as a service platform through which parties can identify opportunities to collaborate, find solutions, and implement advertising and marketing campaigns." The Respondent argued that it had registered the disputed domain name <kite.com> 20 years earlier and had been leasing it to an engineering company.

The UDRP panel found that the Respondent had rights or legitimate interests in the domain because "use of the KITE mark and the original registration of the domain name predate Complainant’s rights in the mark."

The dispute is outside the scope of the UDRP.

Example: In Insolvency Services Group, Inc., As Assignee for the Benefit of Creditors of BIDZ.COM, INC. v. Leon Kuperman / LGK Consulting, NAF Claim No. 1580768, the Complainant argued that the disputed domain name <bids.com> was confusingly similar to its "BIDZ.COM mark." The Respondent argued that the "dispute is outside the scope of the UDRP, involving a complex business history."

The UDRP panel, noting that even the Complainant had stated the dispute was with a former employee, said, "many issues have been raised which would require proof more suited to the thorough scrutiny afforded in litigation" and concluded that it was "a business dispute that falls outside the scope of the UDRP," allowing the Respondent to retain the domain name.

As these decisions demonstrate, a Complainant that wants to obtain a domain name containing only a single, common word may face numerous obstacles in a UDRP proceeding. Therefore, a Complainant would be wise to reconsider whether the UDRP process is appropriate for such a dispute.

8 Easy Ways to Protect Your Domain Name

A domain name can be one of a company's most valuable assets. So, whether you've been using your domain name for years or have just acquired it, you should obviously be sure to protect it -- to ensure that you don't lose it due to oversight, deception or illegal activity.

Here are eight simple things every domain name owner should do to protect itself online:

1. Be sure your domain name is registered to the property entity. Typically, a domain name containing a company's trademark should be registered to the same company that owns the trademark (or, at least a company licensed to use the trademark). Allowing an individual to register a company domain name in his or her own name is asking for trouble when the individual stops working at the company, becomes involved in a dispute with the company, etc.

2. Use a reputable registrar. Many large companies work with "corporate registrars" (such as MarkMonitor) that manage domain names excellently. But if you use a "retail registrar" (such as GoDaddy or Network Solutions), be sure to choose one that is well-known, has been in business a long time, is responsive to customers and, perhaps, located in your country. Saving a few dollars on a domain name registration is short-sighted if you need help later and can't get it -- or, if your registrar goes out of business.

3. Lock your domain name.  It's very easy to "lock" a domain name -- a simple setting typically found on a registrar's domain name management page -- and doing so prevents a domain name from being transferred to another registrant or registrar until the domain name is unlocked.

4. Use a strong registrar password and protect it diligently.  This should be treated with as much care as a password for an online bank account or any other highly sensitive website. Failing to do so could allow someone else to access your domain names -- which they could unlock and transfer behind your back.

5. Go ahead and register (or renew) your domain name for the longest period possible. Many domain names can be registered for up to 10 years, and doing so now makes it less likely that your domain name will lapse simply because you forgot to renew it.

6. While you're at, choose your registrar's "auto renew" option so your domain name registration should renew before it expires. Just be sure you always keep a current payment method (or two!), such as a credit card, on file; and update your payment information when your credit card expires.

7. Be smart about the contact information you provide in your registration, and keep it current. For example, consider using different contacts for the "registrant," "admin" and "tech" contacts, so your registrar will have multiple ways to reach you. And don't use an e-mail address containing the domain name that is the subject of the registration -- if there's a problem with the domain name, then your registrar might not be able to contact you at that e-mail address.

8. Be aware of domain name scams. Unfortunately, unscrupulous registrars and other bad guys online often try to trick domain name registrants into paying unnecessary fees or to transfer their domain names unknowingly. When in doubt, delete or ignore suspicious e-mails about domain names and contact your registrar directly with any questions or concerns.

Following these eight steps will help to avoid many of the problems that can arise with domain name registrations, eliminating costly (and sometimes fatal) disruptions in business.

Domain Name Dispute Filings Rise as New gTLDs Launch

Buried in a recent WIPO press release was news that "cybersquatting case filings" increased 2 percent in 2014, to 2,634 cases. This spike, although only slight, is especially interesting because it follows a year in which the number of cases had declined by about 10 percent.

The 2014 increase may be attributable to two factors related to ICANN's new global top-level domain (gTLD) program:

  • First, the distractions and expense associated with the application and objection process that consumed much of trademark owners' time in 2013 has now passed.
  • Second, the actual launch of some new gTLDs has created more opportunities for cybersquatting that brand owners are pursuing.

As a result, the number of domain name dispute filings may continue to rise in 2015 and could even surpass WIPO's peak in 2012, when 2,884 cases were filed.

Indeed, if filings under the new Uniform Rapid Suspension System (URS) -- which applies to the new gTLDs -- are included, the increase this year could be significant. However, because WIPO does not accept URS filings (the only providers are the National Arbitration Forum (NAF) and the Asian Domain Name Dispute Resolution Centre (ADNDRC)), WIPO's statistics will not convey the complete picture.

Interestingly, while .com remains the most popular TLD in domain name disputes, a number of the new gTLDs already are showing up in UDRP cases. For example, in 2014, 36 .email domains were represented in WIPO UDRP filings, as well as 20 .club domains, 11 .clothing domains and 11 .company domains. So far in 2015, .email and .club remain among the most popular new gTLDs in UDRP proceedings.

 

Some Domains Are Full of Junk

So, you know the expression, "When you're holding a hammer, everything looks like a nail"? Apparently, the same is true when you're a domain name attorney. Sometimes, it's easy to forget that the word "domain" existed long before the Internet (which, itself, hasn't really been with us for too long).

The Merriam-Webster dictionary includes 10 definitions for "domain" -- beginning with "complete and absolute ownership of land" and covering such obscure (to me) entries as "any of the small randomly oriented regions of uniform magnetization in a ferromagnetic substance." The tenth and last entry relates to Internet domain names.

In law school, I studied "eminent domain" -- the right of a government to take private property for public use.

And, in a classic episode, the characters on the Seinfeld television show tried to become masters of their domains. (Consult the Urban Dictionary, if necessary.)

Still, I automatically think of the Internet when I hear the word "domain," since I've been working in this area of the law for more than 17 years

But a recent encounter reminded me yet again that the word has other meanings -- as the accompanying advertisement to "Reclaim Your Domain" makes clear. When I saw that headline, the first thing I thought of was the UDRP -- the Uniform Domain Name Dispute Resolution Policy. (Never mind that the ad was posted inside a restaurant restroom.)

But, as the ad from Junk King declares, this company's services take place entirely offline: "a full range of junk removal services."

Well, considering all of the junk that exists on the Internet, maybe these two domains aren't entirely unrelated after all.

(One more thought before I go. It's too bad that Junk King hasn't cleaned up its own [Internet] domain problem: The company uses junk-king.com (with a hyphen), while junkking.com (without a hyphen) is registered to someone else.)

The GigaLaw Firm helps companies of all sizes protect their brands online, using domain name dispute policies – such as the Uniform Domain Name Dispute Resolution Policy (UDRP) – and other legal tools available to copyright and trademark owners on the Internet.