Domain name disputes - Uniform rapid suspension (URS) system

Internet Corporation for Assigned Names and Numbers (ICANN):

ICANN, based in USA, is responsible for the management of the Internet’s domain name system.

Top-Level Domains (TLDs):

ICANN is allowing registrants to register 1st level domains called Top-Level Domains (TLDs) such as .com, .net, .org.

New generic Top-Level Domains (gTLDs):

In addition to above TLDs, since June, 2011, ICANN has announced that it was allowing registrants to expand the Internet beyond the traditional top-level domains (TLD) and to submit their own invented suffixes for registration of 2nd level domains called new generic top-level domains (gTLDs), for example, .club, .catering, .tech, .fashion, .youtube, .samsung, .ikea, .hyundai, .hotel, .music, .food, .catering, .paris, .nyc, .seoul, .basque, etc., The new gTLDs are not concerned with currents gTLDs like .com etc., or with country code TLDs (ccTLDs). New gTLDs are nothing but the Trademark owners can make use of the same by acquiring new top-level domains that incorporate their trademarks. For examble, Apple could acquire .apple. The trademark owners are bound to take steps in law 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 Apple and in bad faith, might try to register apple.mobile in the new .mobile gTLD. So far, 83 new gTLDs have been approved. Hence, disputes have arisen and will continue to arise abundantly. In such case, in spite of existence several mechanisms to address cybersquatting, such as the Uniform Domain Name Dispute Resolution Policy (UDRP), the new gTLD program has raised additional rooms for cybersquatting which led to devise additional rights protection requirements.

Uniform Rapid Suspension System (URS):

URS is one of the new rights protection mechanisms which have been designed to give trademark owners a cheaper, faster and rapid alternative to the Uniform Dispute Resolution Procedure (UDRP) for combating cybersquatting and other forms of trademark infringement by domain name registrants across all of the new gTLDs. The mechanism of URS is incorporated into all registry agreements executed by the operators of new gTLDs, and it may be adopted voluntarily by incumbent gTLD operators (such as .com, .org, and .net). The trademark owners can use the URS as an additional weapon against cybersquatting and other abuses of their trademarks in the domain name space.

UDRP and URS:

UDRP, an administrative proceeding, is to cancel or recover infringing domains permanently from the cybersquatters. UDRP would take a maximum of 60 days to render a decision from the date of nomination of Panelist/Arbitrator. Whereas URS, an administrative proceeding, designed for clear cases of trademark infringement, where there are no disputed questions of material fact, is to suspend the infringing domains for the rest of the registration period which is similar to interim orders being granted by the Courts. In URS System the Arbitrator is called Examiner who shall render his decision within 3 days. URS proceedings provide no opportunity for complainants to either cancel or obtain a transfer of the domain. As stated above, 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. However, 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.

URS System Providers:

Only two URS providers have been approved by ICANN, as on date, such as, National Arbitration Forum (NAF), USA and Asian Domain Name Dispute Resolution Centre (ADNDRC), having offices in Beijing, Hong Kong, Seoul, and Kuala Lumpur.

Governing Rules:

URS system is governed by the Uniform Rapid Suspension System Rules and Procedures. The important 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;

(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.

Procedures Electronically:

Trademark owners may initiate a URS proceeding by electronically filing a complaint with a URS provider and that the Respondent may submit their response electronically. So also, the decision is rendered electronically.

Fee:

The fees associated with a URS proceeding are generally much lower than UDRP fees. The Supplemental Rules for URS define the costs associated with pursuing a URS claim, which vary depending on the number of domain names at issue.  

Review by URS provider:

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. Non-compliance results in the complaint’s dismissal without prejudice, and forfeiture of the filing fee. If the complaint complies with URS filing requirements, the URS provider notifies the relevant registry operator, who locks the domain within 24 hours.  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). Within 24 hours of locking the domain, the URS provider must notify the registrant of the complaint. The registrant of the domain then has 14 days to file a response. If the registrant fails to respond within 14 days, the registrant is deemed in default, and the complaint proceeds to the examiner for review on the merits.

Examination by URS Examiner:

URS proceedings are conducted by an impartial and independent arbitrator called Examiner. The high standard of proof is the fundamental characteristic of URS proceedings. The Examiner must determine, by clear and convincing evidence, that there is no genuine issue of material fact in order for the claimant to prevail, like a motion for summary judgment, streamlines and expedites the resolution of clear cases of infringement. 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. If the complainant prevails in a case of default, the registrant may still file a response within six months of the decision. Such responses are not considered appeals; rather, the case is examined de novo, as if the registrant had filed a timely response.

Relief(s):

Decisions are to be made within 3 – 5 days of the Response. 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 provide information on the URS. Successful complainants may also extend the registration period, and with it, the suspension period, for an additional year at the commercial registration price.

Appeal:

Either party may appeal against 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. 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.  According to the Forum’s Supplemental Rules, which include the fee schedule for appeals proceedings, the appellant bears the cost of the appeal. The domain(s) at issue will remain locked during the appeal if the complainant prevailed in the original determination. Where the URS proceeding is conducted by the URS Provider, parties also have the option of instituting a UDRP proceeding. In such cases, the URS Provider, 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.

Facebook Inc., a first URS Determination/Decision:

On August 21, 2013, Facebook Inc. filed the first URS complaint, against the registrant of the domain name facebok.pw. The entire process was completed in less than five weeks from initiation to resolution. This decision demonstrates how efficient and effective the URS can truly be in dealing with obvious cases of cyber squatting, including typo squatting.

A case of Radisson Hotels International Inc.,

The author, one of the Panelist Examiners both in NAF and ADNDRC, has determined various new gTLDs, including, but not limited to, and under NAF, in which it was found inter-alia that the Complainant, Radisson Hotels International Inc., USA, is the registered trademark owners of RADISSON and RADISSONBLU under the category of Hotel, Bar, and Restaurant Services; the Complainant also the registered owners of the domain names and ; the disputed domains and registered by the Respondent, Robert Wooroffe of London,comprises the Complainant’s registered trademark and domain names; the disputed domains are identical and confusingly similar to the Complainant’s trademarks; .club is a generic Top Level Domain name (gTLD)  suffix which is non-distinctive and is incapable of differentiating the disputed domain names from the Complainant’s registered trademarks and domain names; the Respondent’s name does not correspond the disputed domain names; the disputed domain names could be used to disrupt the business of the Complainant; since the Respondent himself offered to sell the disputed domain names to the Complainant, the registration of the disputed domain names were in bad faith. Finding all three elements of the URS and satisfied by clear and convincing evidence, it has been determined that the domain name be suspended for the duration of the registration.  

URS System is rapid, effective and cheaper:

URS will be an alternative to the UDRP in cases of clear-cut trademark infringement as it is a cheap and efficient tool for fighting trademark abuse in the new gTLDs.

Growth and importance of URS procedure:

The URS will grow in importance and value to intellectual rights holders. Implementation of the URS by major incumbent TLDs such as .com, .net, and .org would also significantly increase its value to rights holders. No doubt, devise of URS System will be an arsenal of weapon to the trademark owners to combat cyber squatting and other online infringement of their intellectual property in a fast track and rapid mode.

[D.Saravanan, Author, is an Advocate practicing in High Court, Madras and an international Arbitrator] - Email:arbitratorsaravanan@gmail.com