It was just one year ago that The National Arbitration Forum (Forum), an international provider of dispute resolution services, announced that Facebook was the first brand owner to file a dispute under the new Uniform Rapid Suspension System (URS).
The URS is a new dispute resolution mechanism created as part of the Internet Corporation of Assigned Names and Numbers (ICANN) new gTLD program and designed to quickly suspend domain names that are infringing on a brand’s trademarks. The Forum is approved by ICANN to provide domain name dispute resolution services under policies like the URS.
ICANN developed the URS as an alternative to the existing Uniform Domain Name Dispute Resolution Policy (UDRP). The URS is intended to provide a quicker and cheaper alternative to the UDRP. One of the primary differences between the URS and the UDRP is that the disputed domain name is transferred to a prevailing mark owner under the UDRP. Under the URS, a prevailing mark owner is entitled only to suspension of the domain name. While this means that a registrant infringer can no longer use the domain name, it also prevents a mark owner from exercising control over the disputed domain. Thus, if a mark owner wants to obtain an infringing domain name for its own use, the URS is not a viable option.
The UDRP allows a trademark owner to rely on common law trademark rights to establish the first element, whereas the URS requires that the mark be (i) registered; (ii) validated through court proceedings; or (iii) specifically protected by statute or treaty. Except in rare cases, this means a mark owner must own a valid registration to prevail in a URS proceeding. Accordingly, the URS is not an option for owners of non-registered trademarks.
The other significant difference between the showing required under the procedures is the burden of proof. While not specified in the UDRP, arbiters generally apply a “preponderance of the evidence” standard to UDRP disputes. On the other hand, the burden of proof under the URS is “clear and convincing” evidence.
The filing fee for a URS complaint is $375, while the fees for a UDRP complaint start at $1300 or $1500, depending on the provider. Mark owners that elect the URS and use outside representation likely also see significant cost savings in the drafting of the complaint because the URS limits a complainant’s argument to 500 words, whereas UDRP complaints are limited to 15 pages or 5,000 words.
To recap, a mark owner should elect the UDRP over the URS if:
The mark in question is not registered;
The mark owner wants to obtain the disputed domain name;
There is not “clear cut bad faith infringement” of the mark in question; or
The registrant of the domain name may be sophisticated in trademark manners.
As of August 2014, a total of 92 URS cases were filed…88 in the U.S. and 4 in Hong Kong. Suspensions have been issued in 71 cases, versus nine instances where the relief was denied.