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Registration and use of domains at ccTLD registry

Registry

Which entity is responsible for registration of domain names in the country code top-level domain (ccTLD)?

Neustar, Inc manages the .us registry on behalf of the United States Department of Commerce.

Method

How are domain names registered?

.us domain name registrations can be purchased directly from any of a large number of .us-accredited domain name registrars. These include many of the largest and most popular registrars.

Duration

For how long is registration effective?

The duration of a .us registration can vary from one year to multiple years, and may be renewed indefinitely. Qualified governmental agencies may obtain lifetime registrations.

Cost

What is the cost of registration?

Each individual registrar and its resale channel partners set the retail cost to the consumer. Annual and multi-year registrations are available. Prices vary depending on the registrar, the number of domains purchased, the number of years for which the domain is purchased, the additional services provided and, in some cases, the domain name at issue. Typically, a .us domain name can be purchased for one year for US$20 or less.

The pricing policy of Neustar is under review and may be modified in the future to allow premium pricing for high-value and high-visibility domains.

Transfer

Are registered domain names transferable? If so, how? Can the use of a domain name be licensed?

Yes, .us domain names may be transferred by the registrant from one registrar to another and from the registrant to a qualified third party, providing certain requirements can be met. The procedure may vary from registrar to registrar. The transfer process is an administrative process that requires the participation of the registrant. There are restrictions on the transfer of a .us domain name registration during a pending administrative proceeding or a court proceeding involving the domain name.

A transfer may also be ordered by a court, or pursuant to an ADR proceeding, or under other similar circumstances.

There is no prohibition against licensing the domain name to a qualified licensee.

ccTLD versus gTLD registration

What are the differences, if any, with registration in the ccTLD as compared with a generic top-level domain (gTLD)?

The basic registration process for a .us domain name is essentially the same as for gTLDs such as .com.

The one significant difference is that, in order to register a .us domain name, the registrant must have some nexus with the United States. In order to satisfy this US nexus requirement, the registrant must be a natural person who is a US citizen, a permanent resident of the United States, or whose primary place of domicile is in the United States (including the District of Columbia) or its possessions and territories; or a US entity or organisation that is incorporated or otherwise constituted under the local laws of a state of the United States or its possessions and territories; or a foreign entity or organisation that has a bona fide presence in the United States or its possessions and territories.

Factors that should be considered in determining whether an entity or organisation has a bona fide presence in the United States include whether the registrant regularly performs lawful activities within the United States related to the purposes for which it is constituted (eg, selling goods or providing services to customers, conducting regular training activities, attending conferences), and whether it maintains an office or other facility in the United States for a lawful business, non-commercial, educational or governmental purpose.

Registrants’ privacy

Can the registrant use a privacy service to hide its contact information?

No. At the current time, the use of a privacy service or private registration - that is, registering in the name of a proxy third party to prevent public disclosure of the identity of the real registrant - is not permitted with .us domain name registrations and should not occur. However, this policy is under review and may be modified in the future.

All prospective registrants currently applying for a .us domain are required to provide accurate and detailed contact information regarding the registrant and its technical and administrative contacts. Accredited .us registrars are required to obtain accurate contact information from each registrant and to maintain accurate WHOIS information for all domain names that they sponsor. In addition, the registrars are required to investigate and correct any reported WHOIS inaccuracies. The registry collects this information and makes it available online in a WHOIS database.

Pre-litigation actions

Disclosure of registrants’ private details

Under what circumstances will a registrant’s privacy-protected contact information be disclosed? What processes are available to lift a registrant’s privacy shield?

There is no current privacy protected contact information for .us domains. Under current policy, all such information should be publicly available for .us domains. As noted, this policy may be modified in the future.

Third-party notification

Are third parties (such as trademark holders) notified of a domain name registration or attempt to register a domain name? If so, how? If not, how can third parties receive notice?

No. There is no procedure to notify trademark owners of an attempt to register their mark as a .us domain name. In order to monitor .us domain names, a trademark owner must either conduct its own periodic review or commission a search company to monitor the registration of similar domains.

Notice to the registrant

Is there a need to notify the domain name registrant before launching a complaint or initiating court proceedings?

No. There is no requirement that a registrant be notified prior to launching a complaint or initiating a court proceeding.

Transfer or cancellation

Procedure

What is the typical format for a cancellation or transfer action in court litigation (domains registered in either a ccTLD or a gTLD) and through ADR (ccTLD only)?

ADR

The most common forum for arbitration for a .us domain name is the .us Uniform Domain Name Dispute Resolution Policy (usDRP), which is similar to the Internet Corporation for Assigned Names and Numbers (ICANN) UDRP procedure, and the .us Rapid Suspension procedure (usRS), which is similar to the ICANN Rapid Suspension procedure, both described below. There is also a procedure for challenging whether the registrant has the required US nexus to own a .us domain that is not believed to be widely used. It would be unusual to use any other arbitration procedure for a .us domain unless it was done as part of an overall trademark dispute that was not limited solely to .us domain name issues or as part of court-ordered arbitration or mediation in ongoing litigation involving the domain name. Similarly, the most common forum for arbitration of a .com gTLD dispute is undoubtedly the ICANN-mandated UDRP proceeding.

The current approved usDRP arbitration dispute providers for complaints under the usDRP procedure are the American Arbitration Association and the Forum (also known as the National Arbitration Forum).

Each provider follows the usDRP rules as well as its own supplemental rules.

In order to succeed in a usDRP proceeding, the complainant must introduce sufficient evidence to show that:

  • the .us domain name is confusingly similar to a name or mark owned by the complainant;
  • the .us registrant has no rights or legitimate interest in the domain name; and
  • the .us domain name has been registered in bad faith or is being used in bad faith (current UDRP policy for .com domain names and other types of domain names requires proof of both use and registration in bad faith).

The remedies available pursuant to standard proceedings before an administrative panel are essentially limited to ordering either the cancellation or the transfer of the domain name registration to the complainant. No monetary damages or costs or attorneys’ fees can be awarded. In the event that the complainant is successful, the relevant registrar will be directed, after allowing a brief period for the losing registrant to commence a civil action, to either cancel or transfer the domain name at issue. This should take place without any significant additional effort on behalf of the complainant. In the event that the registrant is successful, the status quo is maintained and no action need be taken until the complainant files a civil action in the United States.

There is no appeal process, but the losing party, as noted, has the option of commencing an action in federal court.

The US Department of Commerce has also recently adopted the usRS procedure, which is based on the rapid suspension procedure developed by ICANN for use with the new gTLDs that have been introduced in the recent past. Although the policy is mandatory for the new gTLDs, it is not yet in common use in the ccTLD community. The dispute resolution provider for usRS proceedings is the Forum. Under the rapid suspension procedure, which is designed for clear cases of infringement, the complainant must demonstrate ‘clear and convincing evidence’ establishing the three factors set forth above. In addition, the complainant in a usRS proceeding must establish that the mark being asserted is the subject of a valid national or regional registration owned by the complainant and is in current use or otherwise has been validated in a court proceeding or is protected by statute or treaty. In a rapid suspension proceeding the only remedy is suspension.

The usRS proceeding is intended to be a relatively quick and inexpensive means of addressing clear cases of infringing domain names. In order to succeed, the complainant must meet its burden of proof by clear and convincing evidence, which is a higher burden than required in a usDRP proceeding. If there are any material questions of fact regarding any of the elements, the complaint will be dismissed.

Unlike a usDRP proceeding, both parties have the right to seek a de novo appeal of a decision in a usRS proceeding. The appeal can be based on the existing record or, for an additional fee, based on new evidence provided the evidence clearly predates the filing of the original complaint. The usRS determination does not preclude any other remedies available to the appellant, such as a usDRP proceeding (if appellant is the complainant), or other remedies as may be available in a court of competent jurisdiction. A usRS determination for or against a party shall not prejudice the party in a usDRP proceeding or any other proceedings.

Both the usDRP and usRS procedures are typically conducted by the submission of arguments to an approved arbitrator or a panel of arbitrators. There is no discovery.

Court litigation

As noted, the administrative proceeding requirements do not prevent either party from submitting the dispute to a court of competent jurisdiction in the United States for independent resolution before such mandatory administrative proceeding is commenced, or after such proceeding is concluded.

Litigation involving .us domain names is relatively rare. However, there has been extensive litigation over the years involving .com domain names and, to a lesser extent, domain names in other gTLDs dating back to the early days of cybersquatting. Because cybersquatting of domain names does not always fall neatly within the definition of trademark infringement, some of the very early decisions extended theories of trademark dilution to address cybersquatting even in cases where the ‘fame’ of the mark at issue might not have been well established (in order to establish trademark dilution in the United States the mark at issue must be famous).

As cybersquatting became more prevalent, the US Congress adopted the Anti-Cybersquatting Consumer Protection Act, to specifically address cybersquatting of domain names, including .com and .us domain names. The Anti-Cybersquatting Consumer Protection Act was incorporated into the provisions of the US Trademark Act and has been an effective tool to address cybersquatting of domain names.

Today most litigation involving domain names in the United States is brought pursuant to the provisions of the Anti-Cybersquatting Consumer Protection Act and, in some cases, the other more traditional trademark infringement or dilution provisions of the US Trademark Act. Virtually all actions involving trademark disputes in the United States, including domain name disputes, are commenced in a US federal district court of appropriate jurisdiction rather than in state courts.

There are no special rules of procedure or discovery that are applicable to domain name lawsuits in the United States. The same Federal Rules of Civil Procedure and Discovery that apply to other litigation in the federal courts apply to domain name litigation. It is possible, however, that because some domain name disputes may not be as fact-intensive as other traditional trademark disputes or other litigation there may be less discovery and the disputes may be more amenable to early resolution by summary judgment. It is also possible that these types of disputes may be more like to settle at an early stage if the domain name is not considered to be particularly valuable.

Choosing a forum

What are the pros and cons of litigation and ADR in domain name disputes? What are the pros and cons of choosing a local forum to litigate a gTLD dispute compared with the ICANN ADR format for the gTLD?

The established ICANN UDRP and Rapid Suspension ADR procedures applicable to the various gTLDs and the corresponding ADR procedures applicable to .us domain names offer a relatively simple, inexpensive and fast process for obtaining cancellation, transfer or, in the case of a usRS proceeding, suspension of a domain name, and are exceptionally well suited for use in clear-cut cases. The success rate for the complainant in these proceedings is very good.

However, the ADR proceedings do not provide for the recovery of monetary damages, lost profits, attorneys’ fees or injunctive relief. Where this type of relief is desired, litigation in the federal courts would be the appropriate forum, keeping in mind the fact that the use of the US court system can be time-consuming and very expensive, and may require extensive discovery.

Appeal

What avenues of appeal are available?

There is no appeal process for a usDRP proceeding. However, a losing complainant can bring an action in an appropriate court in the United States that may be deemed to be a type of de facto appeal. As described above, there is an established appeal process for usRS proceedings and, in addition, the complainant in an usRS proceeding may commence a usDRP proceeding.

Trademark litigation in the United States, including litigation involving domain names, is almost always tried in the US federal court system. The initial decision typically is made by a single federal court judge sitting in a federal district court having appropriate jurisdiction over the cause of action and the parties. That decision can be appealed to the appropriate circuit court of appeals for the geographic area in which the district court is located. Under very special circumstances, the Supreme Court will review the circuit court of appeal’s decision, but the Supreme Court is highly unlikely to get involved in any dispute regarding a specific domain name in the absence of some other significant overriding legal issue.

Who may claim

Who is entitled to seek a remedy and under what conditions?

The owner of the mark, in most cases, is the party seeking relief. An exclusive trademark licensee may be entitled to seek a remedy if the licence agreement permits it and the acts of infringement directly harm the licensee. In most instances the trademark owner should also be a party to the action.

Who acts as defendant

Who may act as defendant in an action to cancel or transfer a gTLD in local courts?

The .us registrant would typically be the defendant in any proceeding to cancel or transfer a .us domain name. In a lawsuit there may be additional defendants who have in some way participated or contributed to the infringement. Although it is not inconceivable that the .us registry or a .us-accredited registrar might be added as a defendant in any such action, particularly if they could be said to violate their own written policies, it would be very unusual.

Burden of proof

What is the burden of proof to establish infringement and obtain a remedy?

The burden in ADR proceedings is described in a prior section.

The US Anti-Cybersquatting Consumer Protection Act, as incorporated in the US Trademark Act, was specifically designed to address all types of domain name infringement and applies to infringing or dilutive use of .com domain names and .us domain names.

The act provides that a person shall be liable in a civil action by the owner of a mark that is protected under US law if that person registers or traffics in or uses a domain name that is identical or confusingly similar to that mark or is dilutive of that mark and has a bad faith intention to profit from that mark. The burden of proof is on the plaintiff. In any civil action involving the registration trafficking or use of the domain name under this provision, a court may order the forfeiture or cancellation of the domain name or the transfer of the domain name to the owner of the mark.

‘Trafficking’ in the context of domain names includes, but is not limited to, ‘sales, purchases, loans, pledges, licences, exchanges of currency, and any other transfer for consideration or receipt in exchange for consideration’.

In determining whether the domain name registrant has a bad faith intention to profit, a court may consider many factors, including nine that are outlined in the statute:

  • the registrant’s trademark or other intellectual property rights in the domain name;
  • whether the domain name contains the registrant’s legal or common name;
  • the registrant’s prior use of the domain name in connection with the bona fide offering of goods or services;
  • the registrant’s bona fide non-commercial or fair use of the mark in a site accessible by the domain name;
  • the registrant’s intent to divert customers from the mark owner’s online location that could harm the goodwill represented by the mark, for commercial gain or with the intent to tarnish or disparage the mark;
  • the registrant’s offer to transfer, sell or otherwise assign the domain name to the mark owner or a third party for financial gain, without having used the mark in a legitimate site;
  • the registrant’s providing misleading false contact information when applying for registration of the domain name;
  • the registrant’s registration or acquisition of multiple domain names that are identical or confusingly similar to marks of others; and
  • the extent to which the mark in the domain is distinctive or famous.

In addition to the Anti-Cybersquatting Consumer Protection Act, a plaintiff in the United States may also bring an action against a domain-name registrant for traditional trademark infringement, under appropriate circumstances, if the plaintiff can establish that the use of the domain name, or underlying mark, creates a likelihood of confusion with the plaintiff’s mark or for trademark dilution if an argument can be made that it is likely to dilute a famous mark. The mark must be famous for dilution to apply.

Remedies

What remedies are available to a successful party in an infringement action?

The remedies available in ADR proceedings are cancellation, transfer or, in the case of a usRS proceeding, suspension.

The remedies available to a successful plaintiff in a traditional legal action for cybersquatting, infringement or dilution, based, in whole or in part, on the infringing use of a domain name in the United States, could include the forfeiture or cancellation of the domain name, or the transfer of the domain name to the owner of the mark. They also include the usual remedies for trademark infringement such as, under appropriate circumstances, injunctive relief, lost profits and damages. They can also include attorney’s fees in exceptional cases.

US courts have very broad discretion to award monetary relief depending upon the merits and the circumstances of the case. Generally, the more egregious and intentional the defendant’s conduct, the more likely the court will be to award monetary relief.

Attorney’s fees will be awarded only in exceptional cases. A case under the US Trademark Act can be exceptional for the purposes of awarding attorney’s fees if the losing party was the plaintiff and was guilty of abuse of process in suing, or if the losing party was the defendant and had no defence, yet persisted in the trademark infringement or false advertising for which he or she was being sued in order to impose costs on his or her opponent or if he or she was engaged in counterfeiting.

Injunctive relief

Is injunctive relief available, preliminarily or permanently, and in what circumstances and under what conditions?

Under appropriate circumstances, a plaintiff in a trademark action in a district court can obtain preliminary injunctive relief at an early stage in the proceeding, as well as permanent injunctive relief at the close of the proceeding. As a general rule, in order to obtain preliminary injunctive relief, a plaintiff must demonstrate prospectively that it is likely to succeed on the merits, it is likely to suffer irreparable harm in the absence of preliminary relief, the balance of equities tips in its favour and an injunction is in the public interest.

Proof of irreparable injury is also typically required for permanent injunction following a finding of infringement.

Calculating damages

How is monetary relief calculated?

Under the US Trademark Act, a successful plaintiff may be entitled, depending on the circumstances, to the defendant’s profits, any damages sustained by the plaintiff, and the cost of the action. In assessing profits, the plaintiff shall be required to prove the defendant’s sales only and the defendant must prove all elements of cost or deduction claimed. Under some circumstances, particularly where bad faith is involved, the court may enter amounts above the amount found to be actual damages, but not exceeding three times that amount.

As a practical matter, courts in the United States do not always award monetary damages.

Criminal remedies

What criminal remedies exist, if any?

US law provides for criminal sanctions in limited circumstances such as those involving counterfeit goods. It is unlikely to be applied in typical domain name disputes except in exceptional circumstances.

Limitation period

Is there a time frame within which an action must be initiated?

There is no technical statute of limitations or deadline that pertains to a usDRP or usRS proceeding.

However, significant delay after learning of the existence of an objectionable domain name could undermine the merits of the case in that it could make it appear that the matter is not urgent or not important to the complainant.

The US Trademark Act does not expressly establish a statute of limitations for trademark infringement or cybersquatting. In some jurisdictions, US courts may apply an existing state statute of limitations for corresponding torts, which can vary from state to state. In other jurisdictions, courts may look to see if the doctrine of laches should be applied, which can be very fact-dependent. Because trademark infringement is deemed to be a continuing tort, and because it is deemed to harm the public, some US courts are reluctant to apply a statute of limitations or laches to cut off entirely a plaintiff’s right to injunctive relief, although they may preclude or limit the awarding of monetary relief as a result of delay. However, some courts and authorities have found laches to ban certain relief under appropriate circumstances. In addition, a delay in seeking preliminary injunction relief in a court action can result in the denial of the preliminary relief on the grounds that the delay demonstrates there is no irreparable injury.

Expiry of rights and estoppel

Can a registrant’s rights in a domain name expire because of non-use. Can a registrant be estopped from bringing an infringement action? In what circumstances?

There is a difference between trademarks and domain names. Trademarks can be abandoned through non-use under some circumstances, with three years of non-use being the period of presumptive, but rebuttable, abandonment.

There is no similar concept for domain names, which can remain in effect for as long as the proper renewal fees are paid.

The principles of estoppel might conceivably apply to bar an action with respect to a .us domain name, under some circumstances, if it could be shown that the trademark owner was aware of the use for an extended period of time and took no action, and the domain name registrant expanded its use of the domain in reliance on that inaction. However, it is expected that such circumstances will be rare with respect to .us domain names.

Time frame for actions

What is the typical time frame for an infringement action at first instance and on appeal?

The usDRP proceeding provides a very rapid procedure for determination of disputes, sometimes in as little as 45 days, and rarely more than six months. The usRS proceeding can be resolved in even less time.

In the United States, the timeline for an infringement action in federal court can vary significantly from district court to district court and from judge to judge within any particular district court. Most cases are settled rather than tried. For this reason, in our opinion, there is no reliable ‘typical’ national timeline that may be used to predict the length of time for a trademark dispute. Some cases may be terminated within weeks, depending on whether the court grants preliminary injunctive relief. Other cases may take well over a year for the district court to decide, and years more to move through the appeal process.

Case law

Is a case law overview available on procedural or substantive issues? Does the case law have a precedential value?

In any lawsuit involving an issue of domain name infringement in the United States, the district court responsible for the action will look to and sometimes must rely on prior decisions for precedent on how to decide the pending action. This depends on the similarity between facts and legal issues involved in the precedential decision and the one at hand.

Appointment of panellists

Can parties choose a panellist in an ADR procedure involving a ccTLD? Can they oppose an appointment?

The complainant in a usDRP proceeding has the option of electing either a single-member panel or a three-member panel to resolve the dispute. If the complainant elects a single-member panel, the respondent has the option of electing a three-member panel. If either party requests a three-member panel, the hearing will be held before a three-member panel.

If neither party requests a three-member panel, the provider shall appoint a single panellist from its list of approved panellists.

If either party requests a three-member panel, each party shall submit to the provider the names and contact details of three proposed candidates from the provider’s approved list of panellists to serve as one of the panellists. In making the final selection, the provider shall endeavour to appoint one panellist from the list of candidates provided by each of the parties if possible. If not possible, the provider shall make that appointment from its list of panellists. The third panellist shall be appointed by the provider from the list of five candidates submitted by the provider to the parties in a manner that reasonably balances the preferences of both parties as they may specify to the provider within five days of receipt of the five-candidate list.

Panellists should be neutral and independent. A party may challenge the selection of the panellists, provided that the decision has not already been published, by filing a request with the provider stating the circumstances and specific reasons for disqualification.

The usRS proceeding is decided by a single-member panel appointed by the provider. However, a similar procedure to that described above is used in usRS appeal proceedings.

Costs

What is the typical range of costs associated with an infringement action, including pre-litigation procedures, trial or ADR, and appeal? Can these costs be recovered?

As noted earlier, it is our opinion that there is no typical timeline for a trademark infringement action and, as a result, there is no typical range of costs that would be of any predictive value independent of the facts of each case and the parties involved.

That said, the costs of litigation in the United States are often significant, and even a small or quickly resolved case can cost tens of thousands of dollars. Hotly disputed cases involving significant issues and rights can cost hundreds of thousands of dollars and may exceed US$1 million. Typically, attorney’s fees, which most often represent the bulk of the costs involved, cannot be recovered except in exceptional cases. The costs of ADR proceedings are significantly less and cannot be recovered.

Update and trends

Update and trends

Are there any emerging trends or hot topics regarding domains and domain names in your jurisdiction?

Although some of the new TLDs that have become operational in recent years have gained some traction in the domain name market they do not appear, in general, to have become as popular, widely used and innovative as some predicted. The impact of these new TLDs on the market for .us domains remains to be seen.

There has been some recent consideration as to whether the WHOIS policy for .us domains should be amended to permit registrants to use a proxy service that would not require the public disclosure of their contact information. Currently all .us registrants must provide full and complete contact information and that information is publicly available through the .us WHOIS service. As recently as last year, Neustar seemed to support amending its policy to permit private proxy registrations. To do so would require the approval of the US government. This possibility may be somewhat less likely now in view of the position recently taken by the US government that registries and registrars should not to make drastic changes in their existing WHOIS services under the pretext of complying with the EU’s new General Data Protection Regulation (GDRP) privacy law, which goes into effect this year. In doing so, the US government gave notice that it expects this information to continue to be made easily available through its WHOIS services. The same argument might be made with respect to any proposal made by Neustar to amend its policy to permit proxy registration.