When 'Confusing Similarity' in UDRP Cases Gets Confusing

The first element of the Uniform Domain Name Dispute Resolution Policy (UDRP) requires a complainant to prove that the disputed domain name "is identical or confusingly similar to a trademark or service mark in which the complainant has rights." It's unusual for a complainant to fail on this first of three prongs, but one recent case demonstrates just how uncertain the UDRP can be sometimes.

'A Standing Requirement'

The first UDRP element has been called nothing more than "a standing requirement" by the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition. Once a complainant has established that it actually has rights in a trademark, proving that the disputed domain name is "identical or confusingly similar" to that trademark is usually straightforward.

Indeed, numerous UDRP decisions have said that "the fact that a domain name wholly incorporates a complainant's registered mark is sufficient to establish identity or confusing similarity for purposes of the Policy." The WIPO Overview elaborates the majority position this way:

The threshold test for confusing similarity under the UDRP involves a comparison between the trademark and the domain name itself to determine likelihood of Internet user confusion. In order to satisfy this test, the relevant trademark would generally need to be recognizable as such within the domain name, with the addition of common, dictionary, descriptive, or negative terms... typically being regarded as insufficient to prevent threshold Internet user confusion. Application of the confusing similarity test under the UDRP would typically involve a straightforward visual or aural comparison of the trademark with the alphanumeric string in the domain name.

In other words, so long as a disputed domain name contains the complainant's trademark, a UDRP panel will typically find that the domain name is confusingly similar to the trademark, even if the domain name contains additional words.

Importantly, this low threshold only means that the complainant has succeeded on the first of three elements. The complainant still must prove the second and third UDRP elements: that the domain name registrant has "no rights or legitimate interests in respect of the domain name" and that the domain name "has been registered and is being used in bad faith." The bad faith element, in particular, is often the most challenging hurdle.

One Little Word: The Exception of the Jaguar Land Rover Decision

Like all rules, of course, the first UDRP element has exceptions. One of them appeared, albeit with little explanation, in a dispute over the domain name <rangeroverchauffeur.com> that was filed -- and lost -- by Jaguar Land Rover Limited, the car company.

According to the decision at the Forum, Jaguar Land Rover Limited is "a globally renowned manufacturer of premium automobiles and sport utility vehicles" that has "has produced and sold vehicle models under the Range Rover® brand" since at least 1970. The disputed domain name, <rangeroverchauffeur.com>, was used by the registrant as part of its "independent chauffeur service."

While the case presented an interesting issue as to whether the domain name registrant had rights or legitimate interests in the disputed domain and whether the domain name was registered and used in bad faith, the case effectively ended at the first element of the UDRP.

In finding against Jaguar Land Rover Limited on the first UDRP element, the panel wrote: "Complainant is not in the business of being a chauffeur. Complainant’s marks are only for land motor vehicles and parts thereof. The addition of ANY word to Complainant’s mark does not automatically create confusing similarity."

(Interestingly, the domain name registrant prevailed despite its failure to even file a response. This is what I have written about before as "an embarrassing but not uncommon occurrence.")

While the panel's decision is consistent with its own previous decision three years earlier in a dispute over the domain name <mountainrovers.com>, the <rangeroverchauffeur.com> decision appears to be even more of an outlier. While Jaguar Land Rover Limited might not provide chauffeur services, it seems undeniable that chauffeur services are closely associated with Jaguar Land Rover Limited's product, that is, automobiles. (One dictionary definition says a "chauffer" is "a person whose job is to drive people around in a car.")

One Little Word: More About the Rule, Not the Exception

Many other UDRP decisions have said that "when a domain name is registered which is a well-known trademark in combination with another word, the nature of the other word will largely determine the confusing similarity." For example, in the decision from which the previous quote was taken, the domain name <yellowroadway.com> was found to be confusingly similar to the trademark YELLOW despite the addition of the word "roadway," because YELLOW was used in connection with "common carrier freight services and related business activities " and the word "roadway" "points toward, not away from, [those] services."

Under the <yellowroadway.com> decision and others like it, as reinforced by the WIPO Overview (which panels at other UDRP service providers, including the Forum, often cite), it seems unusual that the panel in the <rangeroverchauffeur.com> case did not find the domain name confusingly similar to the RANGE ROVER trademark.

Interestingly, the panel in the <rangeroverchauffeur.com> also found that the complainant failed to prove the second and third elements of the UDRP, so its conclusion on the first element was not necessary in reaching its decision to deny a transfer of the domain name.

Lessons Learned

The <rangeroverchauffeur.com> decision may be a striking exception to the general rule about confusing similarity, but it is important because it offers lessons for both trademark owners and domain name registrants. Trademark owners should learn that no UDRP case can be taken for granted, which is why I always include extensive factual and legal arguments in my clients' complaints, even on what seem to be straightforward issues. And domain name registrants should learn that even a strong trademark in a domain name does not always result in a transfer because sometimes unusual decisions are decided in favor of domain name registrants.

A Record Year for Domain Name Disputes?

With just a little more than three months left in 2016, the number of domain name disputes filed at the World Intellectual Property Organization (WIPO) appears to be headed for a record year.

(Update: It’s Official: 2016 Was a Record Year for Domain Name Disputes)

According to public data published on the WIPO website, the current number of domain name disputes filed this year (as of this writing, September 27, 2016) is 2,228 -- which would indicate that the total might reach 3,011 cases by December 31. If that trend holds, the total would eclipse the previous most-active year of 2012, when 2,884 cases were filed.

Of course, it is impossible to predict how many domain name disputes will be filed between today and the end of the year. And, the WIPO statistics do not represent all of the complaints filed under the Uniform Domain Name Dispute Resolution Policy (UDRP) (since there are four other service providers), but WIPO traditionally has been the most popular provider and, in any event, is the only provider that publishes real-time data on case filings.

Interestingly, even if the number of disputes remains constant between now and the end of 2016, the total number of disputed domain names (since a single case can include multiple domain names) would only reach 5,373 -- the third-highest level ever recorded at WIPO. (The most active year was 2013, when 6,191 domain names were disputed; and the second most active year was 2014, when 5,603 domain names were disputed.)

What's behind the potential record-setting year in domain name disputes? I see at least two trends.

First, many domain name registrants are engaging in a new type of cybersquatting activity that trademark owners find particularly troublesome, involving fraudulent actions that target specific victims or groups of victims. Among these cases are those in which a domain name is used as part of an employment scam aimed at job seekers.

For example, in a dispute involving the domain name <intercontinental-hotel.com>, the panel wrote that the domain name was used "as part of an employment and phishing scam" where the registrant was "passing off itself as the Complainant, apparently so as to obtain certain information from Internet users as a result of the intentionally created confusion between the disputed domain name and the [Complainant's] [t]rademark." (Disclosure: I represented the complainant in that UDRP case.)

A second trend that certainly accounts for an increase in the number of domain name disputes is the ongoing launch of new global top-level domain names (gTLDs). For example, recent UDRP decisions have involved such domain names as <marlboro.news>, <debeers.feedback>, <legogames.online>, <velux.london>, <mckinsey.careers> and many others. Obviously, the new gTLDs have created new opportunities for cybersquatters.

Still, despite the rise of the new gTLDs, .com domain names remain the most frequently disputed, accounting for about 58% of all disputed domain names in WIPO proceedings this year.

After 2016 comes to an end, I'll take a closer look at the the year in domain name disputes, including trends that may have impacted the potential record number of filings.

What We Can Learn from URS Decisions (Hint: Not Much)

In addition to being rarely invoked, the Uniform Rapid Suspension System (URS), when utilized, is providing trademark owners and domain name registrants with little guidance about this domain name dispute policy. URS determinations typically offer no insight into the reasons behind an expert's decision, regardless of whether the determination was in favor of the trademark owner (to temporarily suspend the disputed domain name) or the domain name registrant (to allow the registrant to retain the domain name without interruption).

Although the URS rules require that a determination must "provide the reasons on which it is based," most determinations fail to offer much discussion. (The URS itself does not require an expert to explain a determination, stating only that "[i]f the Complainant satisfies the burden of proof, the Examiner will issue a Determination in favor of the Complainant" or "[i]f the Complainant does not satisfy the burden of proof, the URS proceeding is terminated and full control of the domain name registration shall be returned to the Registrant.")

As a result, URS determinations -- unlike decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP) -- are typically very short and provide no analysis.

For example, in two recent decisions denying the complainant trademark owners' request to suspend disputed domain names, experts at the Forum simply concluded without any substantive discussion that "[t]he facts as asserted with respect to bad faith do not rise to the level of 'clear and convincing' under the URS proceedure" (denial of suspension for <mil.haus>) and that "the facts presented with respect to bad faith do not rise to the level of 'clear and convincing' under the URS" (denial of suspension for <arcelormittal.lol>).

URS determinations in favor of trademark owners are also typically lacking in analysis.

As a URS expert myself, I tried to offer detailed explanations in some of the earliest determinations under this new domain name dispute policy. For example, in one of the first URS cases, I referred to "the early nature of these URS proceedings" and the need for discussion "above and beyond that which [I]would expect in such a decision," before offering a substantive explanation of how the URS applied to the facts of the case.

The more recent trend, in the relatively few URS determinations that are being published, is not to address substantive issues of law or fact in any detail. This is not surprising, given the following:

• URS proceedings, by design, are expedited. An expert's determination is supposed to be rendered with three business days.  (By comparison, panelists under the UDRP have 14 days to issue their decisions.)
• Filing fees for URS proceedings are minimal -- and experts, of course, receive only a portion of the fee as compensation for their services. At the Forum (the most popular URS service provider), the base URS filing fee is $375.  (By comparison, the base filing fee for a UDRP complaint at WIPO -- the most popular UDRP service provider -- is $1,500.)
• Documents filed in URS proceedings face significant restrictions. For example, URS complaints are limited to an "explanatory statement of no more than 500 words." (By comparison, UDRP filings at WIPO are limited to 5,000 words of substantive discussion.)

As a result, the lack of insight offered by most URS determinations offers parties no guidance about the newest domain name dispute policy and instills little confidence in the system, ensuring that the URS is unlikely to gain popularity and solidifying the UDRP as the domain name dispute policy of choice for most trademark owners.

Clinton and Trump Don't Have Their Candidate-Running Mate Domain Names. So What?

Four years ago, after Republican presidential nominee Mitt Romney picked (now Speaker of the House) Paul Ryan as his running mate, I wrote a blog post titled, "Romney and Ryan Don’t Have RomneyRyan.com. So What?" Now, other bloggers are reporting that Republican presidential nominee Donald Trump and his running mate Mike Pence apparently don't have the domain name TrumpPence.com and that Democratic presidential nominee Hillary Clinton and her running mate Tim Kaine don't have the domain name ClintonKaine.com.

The TrumpPence.com domain name is registered to a privacy service and (as of this writing) redirects to a website for a company that buys and sells domain names. It was registered on February 22, 2016 -- almost five months before Trump picked Pence.

The ClintonKaine.com domain is also registered to a privacy service and (as of this writing) redirects to a "Disqualify Hillary Clinton" page on the official Trump website (using the domain name donaldjtrump.com). It was registered on August 8, 2011 -- almost five years before Clinton picked Kaine.

The fact that neither campaign appears to be in control of its corresponding .com domain name may seem odd -- and, in the case of the ClintonKaine.com domain name that is being used against the Democratic candidates, perhaps embarrassing.

But, just as I said four years ago: So what?

In 2012, I observed that "having a .com domain name that matches the candidates’ names is far from essential to a successful campaign" and that, in any event, the campaign couldn't rely on a domain name dispute under the Uniform Domain Name Dispute Resolution Policy (UDRP) to remedy the situation. The same is true today.

Both the Trump and Clinton campaigns have well-established websites at domain names that were registered a long time ago: donaldjtrump.com was created in 1997 (and, curiously, is registered to The Trump Organization, not Donald J. Trump for President, Inc.), and hillaryclinton.com was registered in 2001 (and is registered to Hillary for America). Searching either of the candidates' names on Google ("trump" or "clinton") prominently leads users to the appropriate campaign websites.

So, it probably doesn't cause any measurable harm to either candidate that they don't have their campaigns' corresponding domain names. Anyone who wants to research the candidates online -- to read about their positions on various issues, to make donations, to buy merchandise -- can easily find the correct websites in a matter of seconds.

As I noted four years ago, 2016 is the first presidential election since the expansion of the domain name system. Presidential (and other) candidates can now register domain names using new gTLDs such as .vote, .gop and .democrat. Yet these new top-level domain names appear to be largely ignored (just as is true of most of the new gTLDs).

To be sure, domain names remain important. But political candidates, like companies of all sizes, can't register every possibly relevant domain name. Fortunately for the politicians, campaigns come and go, so even missing out on a potentially attractive domain name may be irrelevant after election day.

On the other hand, companies that want to build their brands and conduct business online for years, without term limits, may want to manage their Internet campaigns differently -- by proactively registering important domain names and by enforcing their rights through the UDRP and other domain name dispute processes.

[Webinar Replay] UDRP Best Practices: Q&A with WIPO’s Head of Domain Name Disputes

Click above for a replay of the GigaLaw webinar, “UDRP Best Practices: Q&A with WIPO’s Head of Domain Name Disputes.” The webinar was originally presented on August 24, 2016.

In this free webinar, Doug Isenberg of GigaLaw talks with Brian Beckham, Head of the Internet Dispute Resolution Section at WIPO’s Arbitration and Mediation Center.

As the leading provider of domain name dispute services, including the Uniform Domain Name Dispute Resolution Policy (UDRP), WIPO’s Arbitration and Mediation Center is supported by 35 international professionals, offering UDRP-related services in more than 2,500 cases annually in recent years. Based in Geneva, Switzerland, with a further office in Singapore, the WIPO Center was established in 1994 to offer Alternative Dispute Resolution (ADR) options for the resolution of international commercial disputes between private parties. An independent and impartial body, the Center forms part of the World Intellectual Property Organization, a self-funding agency of the United Nations, with 188 member states.

This webinar focuses on basic and advanced issues in domain name disputes, including the role of the WIPO Arbitration and Mediation Center, resources for filing and defending UDRP complaints, how to handle settlements of UDRP cases and other important but subtle issues in UDRP proceedings.

Playing time is approximately one hour.

Related blog posts:

• WIPO Domain Name Dispute Filings Rise 4.5% in 2015
• The Truth About Supplemental Filings in UDRP Cases
• The Growing Importance of Language in UDRP Proceedings

The Impact of Reverse Domain Name Hijacking on Supplemental Filings in UDRP Cases

In another blog post, I wrote about the sometimes confusing circumstances in which domain name dispute panelists will consider supplemental, or additional, filings from the parties (in addition to a complaint and response) in cases under the Uniform Domain Name Dispute Resolution Policy (UDRP). I quoted the WIPO Overview, which states, in part, that supplemental filings may be appropriate where a party can "show its relevance to the case and why it was unable to provide that information in the complaint or response." While the facts and circumstances of every case are obviously unique, one situation in which panelists often accept supplemental filings is when a respondent has raised an allegation of "reverse domain name hijacking."

Reverse domain name hijacking (RDNH) is defined as "using the [UDRP] in bad faith to attempt to deprive a registered domain-name holder of a domain name." While the merits and impact of reverse domain name hijacking are better suited for another discussion, a domain name registrant that raises the RDNH issue in a response should be aware that panels typically allow a complainant to respond to such an allegation via an additional filing.

For example, in the following UDRP proceedings, panels have accepted supplemental filings from complainants, to respond to RDNH:

• Puls Elektronische Stromversorgungen GmbH v. NetIdentity, WIPO Case No. D2002-0205: “In light of the allegation by the Respondent that the pursuit of this administrative proceeding by the Complainant constitutes Reverse Domain Name Hijacking, the Panel takes the view that the Complainant ought to have an opportunity to respond to that allegation and has decided to accept the Complainant’s Supplemental Filing insofar as it is relevant to that issue.”
• Cosmos European Travels AG v. Eurotech Data Systems Hellos, Ltd., WIPO Case No. D2001-0941: Where a respondent asks a panel to find reverse domain name hijacking, “the Complainant is entitled to defend itself” and, therefore, a supplemental filing from the Complainant along with relevant supporting documents “should be admitted in their entirety.”

The decisions in these cases to accept supplemental filings where RDNH is raised was also adopted in more recent UDRP decisions, including Bryn Mawr Communications, LLC v. Linkz Internet Services, WIPO Case No. D2016-0286; and Impossible BV v. Joel Runyon, Impossible Ventures, WIPO Case No. D2016-0506. (Disclosure: I served on three-member panels in both of these 2016 decisions.) In the Impossible BV decision, the panel wrote that it would consider the parties' additional filings -- "but only to the extent that they address the issue of Reverse Domain Name Hijacking."

These decisions are consistent with the prevailing view that a supplemental filing is appropriate where (as I previously wrote) it is "relevan[t] to the case" and where a complainant "was unable to provide that information in the complaint." In other words, a complainant cannot know that a respondent would assert an allegation of RDNH until the respondent has actually done so. At that point, a complainant is usually able to respond to the allegation via a supplemental filing.

However, some panels have handled the issue differently. For example, in Patricks Universal Export Pty Ltd. v. David Greenblatt, WIPO Case No. D2016-0653, the panel "disallowed" the complainant's supplemental filing, writing: "The Complainant being the initiator of the proceedings has an obligation to anticipate the possible arguments that the Respondent may put forward as there is no other opportunity to file additional evidence. It is only in exceptional circumstances that a UDRP panel will allow additional evidence to be filed. There is nothing exceptional which justifies the unsolicited filings of the Complainant." (Perhaps what the panel described as "the Complainant’s empty rhetoric, mudslinging, and unsupported factual allegations" convinced it that a finding of RDNH was compelled regardless of anything further the complainant might add.)

(This post was updated on August 17, 2016, to add the discussion of the Patricks Universal Export case.)

The Truth About Supplemental Filings in UDRP Cases

A typical proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP) consists of a complaint and, sometimes, a response. UDRP Rule 12 makes clear that "further statements or documents from either of the Parties" are appropriate only if "the Panel... request[s], in its sole discretion." In practice, however, such supplemental or additional filings are not uncommon, with the leading UDRP service providers -- WIPO and the Forum -- issuing guidance about when they may be appropriate.

While WIPO's Supplemental Rules don't explicitly address additional filings, the WIPO "Overview" says:

Panels have discretion whether to accept an unsolicited supplemental filing from either party, bearing in mind the need for procedural efficiency, and the obligation to treat each party with equality and ensure that each party has a fair opportunity to present its case. The party submitting its filing would normally need to show its relevance to the case and why it was unable to provide that information in the complaint or response. Most panels that have allowed unsolicited filings have also tended to require some showing of "exceptional" circumstances. Panels which accept a supplemental filing from one side typically allow the other party the opportunity to file a reply to such supplemental filing. In either scenario, or on its own initiative, a panel may in its discretion request further evidence, information or statements from one or other of the parties by way of administrative panel order.

The Forum's Supplemental Rules actually address the issue -- in a manner that differs from that described in the WIPO Overview. In particular, the Forum says that "additional written statements and documents" may be submitted within specified time periods, provided that they "must not amend the Complaint or Response" and further provided that, in the case of a submission from the complainant, payment of "an additional submission fee of $400."

Thus, the key differences between WIPO and the Forum on the issue of supplemental filings has often been summarized as: A WIPO panel may accept a supplemental filing, which does not require payment of an additional fee, if it is relevant and pertains to information that was not previously available; while the Forum gives parties the right to submit a supplemental filing but requires a $400 fee from the complainant.

However, as in many areas of domain name disputes, the issue is more complicated than it might at first appear.

While it may seem obvious that is unclear whether a WIPO panel will consider an additional filing in a UDRP dispute, the opposite is not true: That is, despite the Forum's Supplemental Rules, not every Forum panel will consider an additional filing -- even if the party submitting it pays the $400 fee.

Indeed, a recent UDRP decision at the Forum addresses this very issue. In YETI Coolers, LLC v. Ryley Lyon / Ditec Solutions LLC, NAF Claim No.1675141, the panel wrote that it would "disregard the Complainant’s Additional Submission" because it "was nothing more than a standard 'reply' to the Response" that "did not address any new legal principles or facts that could not have been anticipated in the Complaint" and "did not include any new facts or arguments that did not exist at the time of the Complaint or could not have been anticipated."

In other words, although the complainant presumably paid a fee to submit its additional filing, the panel refused to consider it.

How is that possible?

The Forum's Supplemental Rules must be read closely: They give a complainant the right to "submit" an additional filing, for a fee, but they do not require the panel to consider the supplemental filing.

As a panel in an old (2000) Forum UDRP decision, Electronic Commerce Media, Inc. v. Taos Mountai, NAF Claim No. 0095344, wrote: "[T]he Supplemental Rule could not require Panels to accept these supplemental filings because that would violate Uniform Rule 12 of the ICANN Policy, which vests the discretion to request and accept supplemental materials solely with the Panel. No provider’s Supplemental Rules can override the Policy or Uniform Rules and the discretion they vest in the Panels appointed thereunder."

While it may be unusual for a Forum panel to disregard an additional filing in a UDRP case, it is clear that paying a fee under the Forum's Supplemental Rules does not guarantee that an additional filing will be considered. In other words, at least some Forum panels require a complainant to establish the appropriateness of an additional filing, just as in UDRP cases at WIPO.

Because it's impossible to know if a supplemental filing is going to be considered until after its has been submitted, parties in UDRP proceedings should include all of their factual and legal arguments in the only document they are entitled to file (that is, the complaint or the response) -- even, in the case of the complainant, proactively addressing those issues that the respondent is likely to raise.

An Overview of the Uniform Rapid Suspension System (URS)

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 1.2.6.1. 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.