The Internet Corporation for Assigned Names and Numbers (ICANN) launched the Uniform Rapid Suspension System (URS) (2013) in anticipation of the marketing of new gTLDSs that became available from November 2013. It is one of four new rights protection mechanisms (RPMs) designed to combat cybersquatting. It is not intended for legacy gTLDs, and for new TLDs it is planned only for that class of dispute colloquially referred to as a “slam dunk.” (See ICANN website: “[The URS] complements the existing [Uniform Domain Name Dispute Resolution Policy (UDRP)] by offering a lower-cost, faster path to relief for rights holders experiencing the most clear-cut cases of infringement.”) Relief is conditional on proving cybersquatting by clear and convincing evidence.
The three other URS siblings are the Trademark Clearinghouse (a registry-like service that verifies marks and their uses) (TMCH), a Sunrise Period (a 90-day period during which owners whose trademarks have been verified by the TMCH may preregister names that are the same or similar to their trademarks), and Trademark Claims Notices (a TMCH warning service to registrants of possible infringements intended to discourage them from completing purchases of domain names identical or confusingly similar to marks).
The URS is tailored to suspend infringing domain names rapidly (within as little as 20 days of complaint filing). URS Rule 14(a): “The sole remedy available to Complainant … shall be limited to suspension of the domain name for the balance of the registration period.” Where alleged infringing domain names resolve to active websites, the remedy has the effect of silencing the websites for the duration of the registration, a feature that effectively grants complainants the equivalent of a preliminary injunction. URS Procedure 10.2 reads: “[If the determination is made in favor of Complainant] the Registry Operator shall suspend the domain name, which shall remain suspended for the balance of the registration period, and would not resolve to the original web site” (Emphasis added). Prevailing complainants (at their option) may register the suspended domain names for an additional year after the close of the suspension period (URS Procedure 10.3). This remedy confers significant benefits to prevailing Complainants, which I will return to in my closing note.
The URS is similar in some respects to the UDRP (1999) (but not as some would say, “very similar”) in that both mechanisms are crafted to protect owners from infringing use of their marks incorporated in domain names. One similarity is that the URS is structured along the same lines as the UDRP (a three-part requirement) and employs identical language in itemizing the evidentiary demands complainants must satisfy to prevail and the defenses available to respondents to avoid loss. However (in my view), these similarities are superficial as opposed to the differences. (The UDRP demands complainant prove its case by the less demanding preponderance of the evidence or “more likely than not” standard).
Even though the URS has the appearance of a sibling and is sometimes referred to as a subset of the UDRP (officially only complementary to it), it is actually a separate, substantively different mechanism (not alone because of the evidentiary standards or dissimilarity in their remedies). The similarity of structure and language is a matter of convenience. The URS mirrors the UDRP for the specific purpose of receiving as a given the jurisprudence created by UDRP Panels.
It is clear from the overly prescriptive nature of the URS that Examiners have no authority to stray from the text since that which is in it that is identical to the UDRP has already been interpreted and construed by its Panels. (For the avoidance of doubt, Panel consensus of core principles and the factors assessed in reaching decisions are laid out in the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, now in its third edition). (WIPO chose not the participate as a provider for URS disputes. The principal provider is the Forum. Two other providers are ADNDRC and MFSD srl).
In a dozen or so instances initial determinations have been appealed as provided under URS Procedure Paragraph 12. Appeals have gone both ways: for Complainant, LVMH SWISS MANUFACTURES SA v. GiftSMS et al., FA1509001637103 (Forum November 24, 2015) (<tagheuer.digital>. Initially denied; reversed and suspended on appeal); for Respondent, Grey Global Group LLC v. i-content Ltd. et al., FA1606001681062 (Forum July 8, 2016 initial determination for Respondent and August 10, 2016 affirmed on appeal) (<grey.email>).
There is also a safety-valve built into the URS that allows respondents within stipulated periods to seek relief from their defaults by filing responses after receiving copies of suspension awards (URS Procedure Paragraph 6). An example is Boston Consulting Group, Inc. v. Identity Protect Limited, FA1608001687117 (Forum August 25, 2016) (<bcg.ltd>) (On default initially in favor of Complainant; on receiving response final award in favor of Respondent). Both appeal and safety-valve are exclusive to the URS.
Why do I think the similarities of the URS with the UDRP superficial when considered against the differences? First, there is the name of the decision-maker: Examiner (URS) rather than Panel (UDRP). Panels function as arbitrators which implies an in-depth and studied examination of the facts and the law, while Examiners examine the facts, and only if they are clear and convincing on their face deliver an “up” or “down” determination in keeping with the URS concept of “slam dunk” disputes. This favors well-known and famous marks but not marks lower on the classification scale capable of having associations unrelated to the Complainant’s goods or services.
Under the first requirement or limb of both RPMs Complainants must have a mark, although for the URS it must be registered while Panels are not as constrained (unregistered marks for example, or trade names functioning as marks). In the most recent URS denial-of-complaint decision, FIBO Consulting, Ltd v. Whois Privacy Corp. et al., FA1802001772404 March 6, 2018), the Examiner explained that “none of the domain names contains the mark in whole or in material part. It therefore cannot be concluded that any of them is confusingly similar to the mark.” In Sks365 Malta Ltd., MT v. Mansour Ben Khamsa, D5C230DE (MFSD December 28, 2016) Complainant “has not shown to be currently holding trademark rights on the sign ‘planet win 365’”).
Examiners must make a more careful assessment for domain names composed of common lexical parts (or reconsideration, Boston Consulting Group, supra.) such as “grey,” “east bay,” “rock solid,” “360,” and others. See Banco Popular Español, s.a. v. Perfect LLC et al., FA1710001755479 (Forum November 10, 2017) (PASTOR and <pastorb.online>. “The Examiner considers that a respondent has a right to register and use a domain name to attract Internet traffic based on the appeal of commonly used descriptive or dictionary terms, in the absence of circumstances indicating that the Respondent’s aim in registering the disputed domain name was to profit from and exploit the complainant’s trademark.”)
Looking each of the three requirements separately, these are the principal differences:
- First limb: URS Complainants must have registered rights, and those rights must be for “word” marks. See URS Procedure 188.8.131.52: “The registered domain name(s) is/are 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” (emphasis added). In contrast, Panels have construed the UDRP to include unregistered marks if there is persuasive evidence of use in commerce predating the registration of the domain name. Examiners do not inherit this construction and have no authority to consider extending the jurisdiction.
- Second limb: If respondents are passively holding domain names that could conceivably be lawful—such as <whitecastle.space> but not <dior.clothing>— the complaint must be dismissed because it cannot be said that Respondent lacks legitimate rights or interest. Banco Popular Español, supra. In contrast, UDRP Complainants succeed on this limb by making a prima facie showing that Respondents lack rights or legitimate interests.
- Third limb: If Complainant succeeds under the second limb it has to overcome the consensus (to surmount the higher bar of clear and convincing proof) that passive holding of domain names not particularly associated with it or its goods or services is NOT probative of bad faith registration. Madwire, LLC v. Digital Privacy Corporation et al., FA1607001684058 (Forum July 19, 2016) (<360.marketing>. A common expression in the advertising industry). Under UDRP’s lower standard of proof, bad faith use can be probative of bad faith registration absent rebuttal based on the persuasive lack of knowledge (parties located in different national jurisdictions, for example), or good faith under the first-come, first-served doctrine.
These are substantive differences, not mere quibbles. There are good strategic reasons to invoke the URS over the UDRP, a and vice-versa. Speed of relief as well as the right remedy is an important feature of a legal regime. If the URS remedy is viewed as a form of a non-judicial injunction remedy effective without having to be confirmed by a court of competent jurisdiction it is surprising it is not used more than it is (the three providers administer approximately 200 complaints annually as against approximately 4,500 complaints for the UDRP).
The ability to shut down a website within 20 days without having to go to court is an extraordinary benefit, granted far quicker and less expensively than commencing an action in federal court under the Anticybersquatting Consumer Protection Act (ACPA) (or any other court of competent jurisdiction in other jurisdictions) for the same relief and should be seen as an alternative for shutting down websites harmful to both complainants and consumers: used for 1) phishing, spoofing [Virgin Enterprises Limited v. WhoisGuard, Inc., FA1709001748703 (Forum September 28, 2017) (<virginpulse.life>], and 2) selling counterfeit goods [W.L. Gore & Associates Inc v. WhoisGuard, Inc. et al., FA1711001758178 (Forum December 6, 2017) (<goretexgiyim.world>. “[T]he impression created by … Registrant’s website is [that it is] an original online shop of the Complainant with even more convenient prices but offering counterfeit products”); Eli Lilly and Company v. Shaternik et al., FA170500 1731038D (Forum June 1,2017) (Offering counterfeit products on dozens of websites).
Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (Legal Corner Press, 2015). Available on Amazon and Barnes & Noble. Supplement and Update through August 2016 published January 2017. A Second Edition of the treatise is scheduled for publication October/November 2018. If you purchased the First Edition, you can buy the Second Edition 50% off list price by contacting firstname.lastname@example.org or email@example.com. The discount will not be available from Amazon and Barnes & Noble.