The Uniform Rapid Suspension System: A New Weapon in the War Against Cybersquatters

Vol. 6 No. 3

By

James L. Bikoff is a partner at Silverberg, Goldman & Bikoff, LLP, in Washington D.C. He specializes in intellectual property and Internet law. He can be reached at jbikoff@sgbdc.com. David K. Heasley is a partner at the same firm. He specializes in civil litigation, intellectual property law, and Internet law. He can be reached at dheasley@sgbdc.com. Griffin M. Barnett is an associate at the same firm. He specializes in intellectual property and Internet law. He can be reached at gbarnett@sgbdc.com. Valeriya Sherman is an associate attorney at the same firm. She practices intellectual property law, with an emphasis on trademark prosecution, litigation, and online brand protection. She can be reached at vsherman@sgbdc.com. Justin Miller is third-year law student at American University Washington College of Law. He is a member of the American University Law Review and specializes in intellectual property, communications, and technology law. He can be reached at jmiller375@gmail.com.

In June 2011, the Internet Corporation for Assigned Names and Numbers (ICANN), the international organization responsible for the management and oversight of the Internet’s domain name system,1 announced that it was allowing registrants to expand the Internet beyond the traditional top-level domains, such as .com, .net, and .org, and to submit their own invented suffixes for registration.2 In the first round of this expansion, nearly 2,000 applications were submitted for over 1,400 distinct new generic top-level domains (gTLDs)—including, for example, .tech, .fashion, .youtube, and .samsung.

Trademark owners are profoundly affected by the system of new gTLDs. On the one hand, trademark owners can exploit the new gTLD program by acquiring new top-level domains that incorporate their trademarks (for instance, Samsung could acquire .samsung). On the other hand, trademark owners must now prepare to prevent cybersquatting of their trademarks in second-level domain names across all of the new gTLDs (for instance, some Internet user, without authorization from Samsung and in bad faith, might try to register samsung.mobile in the new .mobile gTLD).3 Though several mechanisms already exist to address cybersquatting, such as the Uniform Domain-Name Dispute-Resolution Policy (UDRP),4 the new gTLD program has raised additional opportunities for cybersquatting by an order of magnitude—so much so that ICANN and community stakeholders agreed to devise and implement a host of additional rights protection requirements.

One of these new rights protection mechanisms is the Uniform Rapid Suspension System (URS). It is designed to give trademark owners a faster, cheaper alternative to the UDRP for combating cybersquatting and other forms of trademark infringement by domain name registrants across all of the new gTLDs. The URS is incorporated into all registry agreements5 executed by the operators of new gTLDs, and it may be adopted voluntarily by incumbent gTLD operators (such as .com, .org, and .net).6

This article provides an overview of the URS, assesses its pros and cons (particularly in comparison to the UDRP), and highlights how trademark owners can use the URS as an additional weapon against cybersquatting and other abuses of their trademarks in the domain name space.

The URS Procedure

Basic Requirements

The URS is designed for clear cases of trademark infringement, where there are no disputed questions of material fact. The sole remedy the URS offers is suspension of a domain name for the balance of its registration period.

As with the UDRP, trademark owners may initiate a URS proceeding by electronically filing a complaint with a URS provider. To date, only two URS providers have been approved by ICANN. The first of these, the National Arbitration Forum (Forum), was approved on February 20, 2013, and its URS operation is now live. On April 19, 2013, the Asian Domain Name Dispute Resolution Centre (ADNDRC) became the second URS provider approved by ICANN, and is expected to launch its URS operation soon.7

The core requirements for a URS complaint are substantially similar to those in a UDRP proceeding. To state a claim for relief, a URS complainant must show that:

(1) The registered domain name is identical or confusingly similar to a word mark:

(a) for which the complainant holds a valid national or regional registration that is in current use; or

(b) that has been validated through a court proceeding; or

(c) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed;8

(2) The registrant has no legitimate right or interest to the domain name; and

(3) The domain was registered and is being used in bad faith.9

Review and Examination

Within two business days of filing, the URS provider conducts administrative review of the URS complaint to ensure that it complies with the filing requirements.10 Noncompliance results in the complaint’s dismissal without prejudice, and forfeiture of the filing fee.11 The URS Procedure, as currently drafted, provides no opportunity for claimants to correct deficiencies in the filing requirements.12

If the complaint complies with URS filing requirements, the URS provider notifies the relevant registry operator, who locks the domain within 24 hours.13 When a domain is locked, it continues to resolve to a website, but the registry restricts any changes to registration data, including changes to the domain name(s).14 Within 24 hours of locking the domain, the URS provider must notify the registrant of the complaint.15 The registrant of the domain then has 14 days to file a response limited to 2,500 words.16 If the registrant fails to respond within 14 days, he or she is deemed in default, and the complaint proceeds to the examiner for review on the merits.17

If the complainant prevails in a case of default, the registrant may still file a response within six months of the decision.18 Such responses are not considered appeals; rather, the case is examined de novo, as if the registrant had filed a timely response.19

URS proceedings are conducted by a single examiner, who must determine, by clear and convincing evidence, that there is no genuine issue of material fact in order for the claimant to prevail.20 There is no discovery or hearing; the evidence consists only of the materials submitted with the complaint and the response (if any), and those materials will serve as the entire record forming the basis of the examiner’s decision.21 The high standard of proof is the fundamental characteristic of URS proceedings: by requiring clear and convincing evidence that there are no disputed questions of material fact, the URS, like a motion for summary judgment, streamlines and expedites the resolution of clear cases of infringement.

Cost

The fees associated with a URS proceeding are generally much lower than UDRP fees. On July 1, 2013, the Forum’s Supplemental Rules for URS proceedings entered into force. These rules define the costs associated with pursuing a URS claim, which vary depending on the number of domain names at issue (see Table 1).22 The Forum was able to meet ICANN’s target of $300 to $500 for filing fees, resulting in URS fees significantly lower than the $1,000 to $7,000 typically associated with UDRP proceedings.23

On July 17, 2013, the ADNDRC published its tentative fee schedules for URS proceedings (see Table 2).24 As with the Forum, the ADNDRC’s response fees are refundable to the prevailing party, while reexamination fees are nonrefundable. Where 30 or more domain names are at issue, the fees are to be determined by the individual ADNDRC office in Beijing, Hong Kong, Seoul, or Kuala Lumpur.

Appeals

Either party may appeal an adverse determination within 14 days. The appeal is simply a de novo review of the case by either a single examiner or by a panel of three, at the request of either party.25 The appellant is permitted to introduce new material into the record, for an additional fee, but such material must clearly predate the complaint’s filing date in order to be admitted.26 The domain(s) at issue will remain locked during the appeal if the complainant prevailed in the original determination. According to the Forum’s Supplemental Rules, which include the fee schedule for appeals proceedings, the appellant bears the cost of the appeal (see Table 3).27

Where the URS proceeding is conducted by the Forum, parties also have the option of instituting a UDRP proceeding. In such cases, the Forum (which also administers UDRP proceedings) will credit half of the filing fee from the URS proceeding to the filing fee for the UDRP case, provided the parties and domains at issue remain the same and the UDRP is filed within 30 days of the URS outcome.28

With the ADNDRC, parties also can choose between a one- or three-member panel, and appellants can introduce new material for an additional fee. The ADNDRC also varies its fees for appeals based on the number of domains at issue and introduction of new material (see Table 4).29

Remedies

If a complainant is successful in a URS proceeding, the registrant’s domain will be suspended for the balance of the registration period. While suspended, the domain will not resolve to the registrant’s website, but will resolve instead to a website providing information on the URS.32 Successful complainants may also extend the registration period, and with it, the suspension period, for an additional year at the commercial registration price.

URS proceedings provide no opportunity for complainants to either cancel or obtain a transfer of the domain. Those remedies exist solely in UDRP proceedings or court proceedings, so the URS is not the appropriate mechanism for trademark owners seeking to recover infringing domains. That being said, a URS determination does not preclude any party from seeking additional remedies by bringing a UDRP action or an action in a court of competent jurisdiction, and a URS determination for or against a party does not prejudice the party in any such further proceeding. For a side-by-side comparison of the URS and the UDRP, see Table 5.

The First URS Decision

On August 21, 2013, Facebook Inc. filed the first URS complaint, against the registrant of the domain name facebok.pw. The proceeding commenced on September 11, 2013, and the Forum examiner rendered a decision on September 27, 2013—less than five weeks from initiation to resolution.

The examiner found by clear and convincing evidence that the respondent’s domain name, facebok.pw, was identical or confusingly similar to Facebook’s FACEBOOK trademarks, that the respondent had no rights or legitimate interests in the name “facebok,” that the respondent used the domain name to “generate click through fees for Respondent’s personal financial gain,” and that the domain name was registered and used in bad faith as part of a “pattern of illegitimate domain name registrations.” Finding all three elements of the URS satisfied by clear and convincing evidence, the examiner ordered the domain name suspended for the duration of the registration.33

This first decision demonstrates how efficient and effective the URS can truly be in dealing with obvious cases of cybersquatting, including typosquatting. During the remainder of the website’s registration period, it will resolve to a page containing the following:

Conclusion

Ultimately, the URS should provide a useful alternative to the UDRP in cases of clear-cut trademark infringement. For trademark holders satisfied with suspending a domain, rather than canceling or transferring it, the URS should be a cheap and efficient tool for fighting trademark abuse in the new gTLDs.

The URS will grow in importance and value to rights holders as new gTLDs are delegated, as additional registries implement it, and as URS providers gain experience handling URS claims. Implementation of the URS by major incumbent TLDs such as .com, .net, and .org would also significantly increase its value to rights holders.

All trademark owners should be familiar with the URS and incorporate it into their arsenal of weapons to combat cybersquatting and other online infringement of their intellectual property.

Endnotes

1. See ICANN Factsheet, Internet Corp. for Assigned Names & Numbers, http://archive.icann.org/en/factsheets/fact-sheet.html (last visited Nov. 12, 2013). More specifically, ICANN coordinates the domain name system, Internet protocol addresses, space allocation, protocol identifier assignment, generic (gTLD) and country code (ccTLD) top-level domain name system management, and root server system management functions. See About Us: Welcome, Internet Corp. for Assigned Names & Numbers, www.icann.org/en/about/welcome (last visited Nov. 12, 2013). These services were originally performed under U.S. government contract by the Internet Assigned Numbers Authority and other entities. See id.

2. See About Us, supra note 1; Fahmida Y. Rashid, ICANN Approves Custom Generic Top Level Domains, eWeek (June 20, 2011), www.eweek.com/c/a/Cloud-Computing/ICANN-Approves-Custom-Generic-Top-Level-Domains-775234.

3. See, e.g., Trademarks and New gTLDs, NewgTLDsite.com, www.newgtldsite.com/trademarks-and-new-gtlds (last visited Nov. 12, 2013).

4. See Uniform Domain-Name Dispute-Resolution Policy (UDRP) (effective Oct. 24, 1999), www.icann.org/en/help/dndr/udrp/policy.

5. Every operator awarded a new gTLD must sign a registry agreement with ICANN. The registry agreement is a formal contract that sets forth the rights and obligations of ICANN and the new gTLD operator with respect to operating the new gTLD.

6. In late July 2013, the .pw registry became the first incumbent TLD to voluntarily adopt the URS. Press Release, .pw Registry, .pw Becomes the First TLD to Adopt the Uniform Rapid Suspension Rights Protection Mechanism (July 29, 2013), http://registry.pw/pw-becomes-the-first-tld-to-adopt-the-uniform-rapid-suspension-rights-protection-mechanism.

7. Dennis Cai, Presentation at the ICANN 47 Meeting in Durban, South Africa: ADNDRC URS Implementation—Status Update 5 (July 17, 2013), http://durban47.icann.org/meetings/durban2013/presentation-urs-adndrc-17jul13-en.pdf.

8. URS complainants may submit verification records from the Trademark Clearinghouse to the URS provider as proof of use of the trademark at issue in the URS proceeding. See Uniform Rapid Suspension System (URS) Procedure, art. 8.1.2.1 (Mar. 2013), http://newgtlds.icann.org/en/applicants/urs (follow “URS Procedure” hyperlink). The Trademark Clearinghouse is a new global repository for trademark data specifically designed to work in conjunction with the new gTLD program. The verified data in the Trademark Clearinghouse will be used to provide trademark sunrise and claims notification services, required in all new gTLDs. Sunrise service will allow trademark owners who have registered their marks in the Trademark Clearinghouse to defensively register second-level domain names in new TLDs before registration is open to the general public. Claims notification service will notify would-be domain name registrants that a domain name they are seeking to register matches a trademark in the Trademark Clearinghouse, and will notify the rights holder of the registration. See FAQs: Trademark Clearinghouse, Internet Corp. for Assigned Names & Numbers (May 6, 2013), http://newgtlds.icann.org/en/about/trademark-clearinghouse/faqs.

9. URS Procedure, supra note 8, at art. 8.1. The bad faith element of the claim is to be weighed on its merits in each case. Profiting from the trade of domains, holding a large portfolio of domains, and earning “click-per-view revenue” are not indicative of bad faith on their own. Rather, the examiner is directed to “review each case on its merits.” Id. at arts. 5.9.1–.2.

10. Id. at arts. 3.1–.2.

11. Id. at art. 3.4.

12. Id. at art. 3.3.

13. Id. at arts. 3.1–.2, 4.1.

14. Id. at art. 4.1.

15. Id. at art. 4.2.

16. Id. at arts. 5.1, .4. When 15 or more domains are at issue, the registrant also pays a response fee that is refundable to the prevailing party. Id. at art. 5.2.

17. Id. at arts. 6.1, .3.

18. Id. at art. 6.4. Registrants may also request an additional six-month extension if the request is made within the first six months after the default.

19. Id. at arts. 6.4–.5.

20. Id. at arts. 8.2–.3.

21. Id. at art. 9.1.

22. Nat’l Arbitration Forum, URS Supplemental Rules ¶ 18 (effective July 1, 2013) [hereinafter Forum URS Supplemental Rules], available at http://domains.adrforum.com/main.aspx?itemID=1863&hideBar=False&navID=497.

23. See, e.g., Czech Arbitration Court, UDRP Supplemental Rules, Annex A: Fee Schedule (effective Mar. 1, 2010), http://udrp.adr.eu/arbitration_platform/udrp_supplemental_rules.php#17 (ranging fees from $500 to $7,100, depending on the size of the panel and number of domains at issue).

24. Cai, supra note 7, at 9.

25. Forum URS Supplemental Rules, supra note 22, ¶ 16(d). If the appellant elects a single examiner to hear the appeal, but the appellee requests a three-member panel, the appellee will bear the additional cost of the three-member panel. Id. ¶ 16(c).

26. URS Procedure, supra note 8, at art. 12.2.

27. Forum URS Supplemental Rules, supra note 22, ¶ 18.

28. Id.

29. Cai, supra note 7, at 10. As is the case for the initial proceedings, when 30 or more domains are at issue, the relevant ADNDRC office will determine the fees to be charged on appeal.

30. Citations within this column are to URS Procedure, supra note 8.

31. Citations within this column are to UDRP, supra note 4, unless otherwise noted.

32. URS Procedure, supra note 8, at art. 10.2.

33. See Facebook Inc. v. Radoslav, No. FA1308001515825 (Nat’l Arb. F. Sept. 27, 2013), http://domains.adrforum.com/domains/decisions/1515825D.htm.

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