ICANN’s Uniform Rapid Suspension System (URS) seeks to offer trademark holders a quick and cost-effective way of tackling infringing domain names. The URS is designed to sit alongside the existing Uniform Domain Name Resolution Policy (UDRP) system, as a quicker, cheaper alternative to the UDRP. However, the high burden of proof in the URS and the limited extent of its jurisdiction mean that the UDRP will continue to be the appropriate forum in many cases.
The expansion of gTLDs and the risk to trademark owners
In June 2011, ICANN, which is responsible for overseeing the Internet’s global domain name system, launched a program to greatly expand the number of generic top level domain names (gTLDs) available. As a result over 800 new gTLDs have been approved by ICANN, with over a thousand more waiting to be processed.
With an increasing number of domain names available, trademark owners should be alert to the risk that a third party will register a domain name that uses their brand. In particular, cyber squatters may seek to capitalise on the opportunity to register domain names that incorporate existing brands for their own benefit (and to the detriment of trademark owners). ICANN began developing the URS in June 2012 to address the increased risks posed by the expansion of gTLDs and to allay trademark owners' concerns.
The role of the URS
The URS is designed to be a streamlined process for the most clear-cut cases of infringement. As such, there is little scope for lengthy argument (there are caps on word limits) and a high burden of proof placed on the complainant (evidence must be “clear and convincing”). The URS process is therefore somewhat analogous to summary judgment in court proceedings. The remedy available to complainants through the URS process is suspension of the infringing domain name and traffic to the domain name will be redirected to an information page about the URS.
UDRP proceedings will be more appropriate where there are complex factual and legal issues or where other remedies are required, such as cancellation of the domain name or transfer of the domain name to the complainant.
However, while it is not possible to pursue URS and UDRP proceedings simultaneously, if a complainant is unsuccessful before the URS, it will retain the right to bring proceedings under the UDRP.
Jurisdiction of the URS
The URS process is targeted at new gTLDs, such as .holdings, .ventures and .enterprises (a full list can be found on the ICANN website1). They are, by nature, the more obscure gTLDs (e.g. .guru or .istanbul). Domains such as the familiar .com or country domains like .co.uk still require complainants to use the UDRP process. Some older ‘legacy’ domains have signed up to the URS scheme on the renewal of their registry agreements with ICANN, but this is not compulsory for all legacy gTLDs.
The URS Procedure
URS proceedings are commenced by filing a complaint electronically with a URS provider. There are currently only two approved by ICANN: the National Arbitration Forum, based in the United States, and the Asian Domain Name Dispute Resolution Centre, which has offices in Beijing, Hong Kong, Kuala Lumpur and Seoul.
There are three core requirements which the complainant must address in the complaint and prove with “clear and convincing” evidence:
- that the registered domain name is identical or confusingly similar to a word mark that (i) is registered as a trademark and currently in use, (ii) has been validated through court proceedings, or (iii) is specifically protected by a statute or treaty;
- that the person that has registered the domain name (the registrant) has no legitimate right or interest to the domain name; and
- that the domain was registered and is being used in bad faith.
Where a trademark is owned by a group made up of a number of entities, care should be taken to ensure that the complaint is in the name of the entity that is registered as the owner of the relevant trademark or that evidence is provided showing the relationship between the complainant and the owner of the trademark. A number of complaints have failed on this basis.
In addition, decisions under the URS emphasise the importance of current bad faith use. This can be difficult to demonstrate where there is no website at the domain or simply a holding page, rather than a site deliberately trying to derive income by taking advantage of the complainant’s rights.
The cost of filing a complaint varies between URS Providers and between UDRP Providers, but generally a URS complaint is substantially cheaper than a UDRP complaint. For example, the filing fee for a URS complaint with the National Arbitration Forum costs USD 375 for up to 14 domain names, whereas a UDRP complaint with the World Intellectual Property Office (WIPO) for 6 to 10 domain names with a single panellist costs USD 2,000.
The complaint will be subject to an initial administrative review by the URS Provider within two days of the complaint being submitted to ensure that it meets the basic filing requirements.
Locking the domain
Provided the filing requirements are met, the URS Provider will notify the registry that controls the relevant domain of the complaint. The registry is then required to lock the domain within 24 hours. Once locked any website at the domain can still be accessed, but the registration details, such as ownership information, cannot be changed (so it cannot be transferred).
Once the domain name is locked, the URS Provider will notify the registrant of the domain name, who will have 14 days to file a response (which is limited to 2,500 words). Default on the part of the respondent does not guarantee a finding in favour of the complainant; the case is still assessed on its merits. There have been a number of instances of complaints being rejected despite a complete lack of participation on the part of the registrant. By contrast, under the UDRP, examiners can draw adverse inferences from default by the registrant.
The complaint is examined by a single examiner against the three requirements (set out at a) to c) above). Under the UDRP, either of the parties can request that the complaint be determined by a three-member panel. The burden of proof in the URS is high – the evidence must be clear and convincing and there must be no genuine issue of material fact.
If the examiner decides that the complainant has proven its case to the requisite standard it will issue a Determination in favour of the complainant. The Determination will be immediately sent to the relevant domain registry, which must suspend the domain until the registration lapses and redirect any Internet traffic to an information page provided by the URS Provider.
If the examiner decides that complainant has not proven its case to the requisite standard, it will reject the complaint and the domain will be unlocked. Nevertheless, it will still be open to the complainant to challenge the registrant’s use of the domain under the UDRP (or a court of competent jurisdiction). Furthermore, there is an appeal window of 14 days during which further evidence can be adduced.
Overall the URS process is substantially quicker than under the UDRP, which WIPO estimates normally takes around 60 days.
In clear-cut cases the URS process is a valuable option to quickly and cost-effectively suspend the use of a domain until it comes back up for registration. In urgent scenarios it may also be possible to use the URS process as an interim measure to suspend a domain before making a UDRP complaint for cancellation or transfer of the domain. However, where issues are more complex or nuanced, making a URS complaint may be a wasted exercise and trademark owners would often better make a complaint to UDRP at the outset. With the increasing risks posed by ICANN’s gTLD programme, the URS is a welcome addition to trademark owners’ arsenal and it is hoped that in due course more ‘legacy’ gTLDs will be brought within its jurisdiction.