The Uniform Rapid Suspension System (URS) is a domain name dispute policy that allows a trademark owner to file a complaint and, if successful, get a domain name temporarily suspended. Like the longstanding Uniform Domain Name Dispute Resolution Policy (UDRP), the URS can be an effective way for trademark owners to combat cybersquatting against their brands online. Indeed, the URS was envisioned as an even quicker and less-expensive approach to resolve a domain name dispute.
However, unlike the UDRP, the URS largely applies only to the “new” generic top-level domains (that is, those approved following ICANN’s 2012 domain name expansion process) – not to .com, .net, .org and the other traditional top-level domains. And, also unlike the UDRP, which allows a trademark owner to get a domain name transferred to itself, the URS only provides for a temporary suspension of the problematic domain name.
The URS’s Three-Part Legal Test
The legal test for a URS complaint is almost the same as for a UDRP complaint. Specifically, the URS requires a trademark owner, or “complainant,” to show all three of the following:
- The disputed domain name is identical or confusingly similar to a word mark that meets certain criteria.
- The registrant of the domain name, or the “respondent,” has no legitimate right or interest to the domain name.
- The domain name was registered and is being used in bad faith.
The primary difference between this three-part test and the three-part test under the UDRP is that the first element under the UDRP applies to any mark in which the complainant has rights (including marks that are protected by common law or marks that are not word marks). The URS, though, only applies 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.”
The trademark owner must prevail on all three of these elements to succeed in a URS proceeding. In other words, even if a complainant fails on only one element, the arbitration examiner is required to issue a decision in favor of the respondent, allowing the registrant to keep the disputed domain name.
Not only must the trademark owner succeed on all three parts of the URS legal test, but it also must meet a very high burden of proof – “clear and convincing evidence,” as the URS itself specifies. Indeed, the URS makes clear that this arbitration process is “not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse.”
This is certainly a more difficult requirement than the “preponderance of evidence” standard that has emerged from UDRP doctrine.
URS Dispute Providers
A URS complaint can be filed at any ICANN-approved dispute provider – currently, the Forum (formerly the National Arbitration Forum) or the Asian Domain Name Dispute Resolution Centre (ADNDRC). Although the Forum is based in Minneapolis (USA) and the ADNDRC has multiple locations in Asia, all URS filings are conducted online.
The World Intellectual Property Organization (WIPO), which is the largest UDRP service provider, does not offer URS services. Similarly, the Czech Arbitration Court accepts UDRP but not URS filings.
The URS filing fees are significantly less than the UDRP filing fees charged by the largest providers. The Forum’s fees begin at US $375 (for complaints that include up to 14 disputed domain names), and the ADNDRC’s fees start at $360 (for up to five domain names). Respondents must pay a fee for proceedings that include 15 or more domain names (though the response fee is refundable to the prevailing party), and additional fees are charged for re-examinations, re-examination extensions and appeals – all of which are options not available under the UDRP.
Mechanics and Timeline for URS Proceedings
A URS complaint is filed online, and the requirements are much more stringent than for UDRP proceedings. Among other things, for example, a complaint is limited to 500 words (as opposed to 5,000 words in a WIPO UDRP filing), and the number of annexes is restricted. Complaints cannot be amended, and supplemental filings are not permitted.
All URS proceedings are conducted in English (unlike UDRP proceedings, which are typically conducted, with some exceptions, in the language of the registrar’s registration agreement).
A domain name registrant has 14 days to respond to a URS complaint, although an extension of up to seven additional days may be granted “if there is a good faith basis for doing so.” Unlike the complaint, a response can be up to 2,500 words.
Regardless of whether the domain name registrant has submitted a response, the case file is submitted to an examiner (URS proceedings are limited to a single arbitrator, while the UDRP allows either party to elect one or three arbitrators). The examiner’s determination (the URS equivalent of a UDRP decision) is due within five days after a response is filed.
If the examiner’s decision is in favor of the complainant, then the registry operator is required to suspend the disputed domain name. Specifically, the URS states:
The Registry Operator shall cause the nameservers to redirect to an informational web page provided by the URS Provider about the URS. The URS Provider shall not be allowed to offer any other services on such page, nor shall it directly or indirectly use the web page for advertising purposes (either for itself or any other third party). The Whois for the domain name shall continue to display all of the information of the original Registrant except for the redirection of the nameservers. In addition, the Registry Operator shall cause the Whois to reflect that the domain name will not be able to be transferred, deleted or modified for the life of the registration.
The suspension remains in effect until the domain name is due to expire, unless the winning complainant elects to pay for one additional year of suspension “at commercial rates.”
The screenshot included at the top of this blog post shows what a web page looks like for a suspended domain name.
If the examiner’s decision is in favor of the respondent, then “full control” of the domain name is returned to the registrant.
Re-examinations and Appeals Under the URS
Unlike the UDRP, an arbitrator’s decision is not necessarily the end of the proceeding. A losing registrant that failed to submit a response (in what is then called a “default” proceeding) may “seek relief from Default via de novo review” for up to six months after the date of notice of the default and is even entitled to an additional six-month extension (that is, for a total of one year) if requested during the initial six-month extension period.
Further, either losing party – that is, the complainant or the respondent – may file an appeal (for an additional fee) within 14 days after a determination has been issued. Appeals are based on the existing record.
In addition, the URS makes clear that a determination “shall not preclude any other remedies available to the appellant, such as UDRP (if appellant is the Complainant), or other remedies as may be available in a court of competent jurisdiction.”
Consequences for Losing Complainants
A complainant that loses a URS proceeding does not necessarily face any adverse consequences, although the URS includes “penalties for abuse of the process by trademark holders.” Specifically, the URS states that a complaint may be deemed abusive if the examiner determines that:
it was presented solely for improper purpose such as to harass, cause unnecessary delay, or needlessly increase the cost of doing business; and
(i) the claims or other assertions were not warranted by any existing law or the URS standards; or (ii) the factual contentions lacked any evidentiary support.
If a complainant is found to have filed two abusive complaints, then the complainant will be barred from utilizing the URS for one year.
The URS also includes penalties for a complainant that submits a “deliberate material falsehood,” which is defined as “an assertion of fact, which at the time it was made, was made with the knowledge that it was false and which, if true, would have an impact on the outcome on the URS proceeding.” A complainant will be barred from using the URS for one year upon the first finding of a deliberate material falsehood, and permanently upon two such findings.
Pros and Cons of the URS
The URS is clearly a less expensive and quicker process than the UDRP. For a trademark owner facing a particularly troublesome domain name, the URS may be a wise choice, even if it is only used to get a domain name rapidly suspended and later, perhaps, transferred by following up with a UDRP complaint.
However, as I’ve written before, the URS is not (yet, at least) proving to be a very popular dispute policy.
The URS’s limited remedy – temporary suspension – is probably the leading reason why it is not being utilized more frequently. Because a suspended domain name is ultimately released to the general public, it may fall into the hands of another cybersquatter after the suspension period expires, at which point the trademark owner will have to decide whether to file yet another URS complaint (seeking only another temporary remedy via suspension) or a UDRP complaint (seeking a permanent remedy via transfer).
But the remedy is not the only drawback of the URS. Because of the dispute policy’s very high burden of proof and strict limitations on the arguments that can be included in a complaint, it is more difficult for a trademark owner to prevail in a URS proceeding than under the UDRP. As I’ve written before, the doctrine of “passive holding” (which allows a trademark owner to win a UDRP case under certain circumstances involving a domain name that is not actively being used) appears to be less applicable to URS cases. And, URS cases involving pay-per-click (PPC) advertising sites and domain names that contain non-fanciful trademarks also pose challenges for complainants.
Ultimately, a trademark owner should consider both the URS and the UDRP before deciding how (and whether) to proceed against a cybersquatter, keeping in mind the financial, timing and remedy differences between the two dispute policies.
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