The Internet Corporation for Assigned Names and Numbers (ICANN) implemented the Uniform Rapid Suspension System (URS) in 2013 together with three other rights protection mechanisms for trademarks. It “is not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse” (URS Procedure 8.5). It was designed to afford rights holders claiming abusive registration of domain names with new gTLD extensions an even faster route to remedy than the Uniform Domain Name Dispute Resolution Policy (UDRP). From complaint to award, fourteen rather the thirty to forty days for the UDRP. (Examiners are expected to decide the complaint within 5 days of the filing of the response, URS Procedure 9.6).
Unlike the UDRP, rights holders for the URS qualify only if they have registered trademarks with proof of use in commerce and they have to be “word marks.” Those claiming unregistered marks have no standing to maintain a URS proceeding. Despite these several differences, the URS is similar to the UDRP in both the language of its three-prong structure and its evidentiary demand for proving conjunctive bad faith. It is dissimilar 1) in requiring proof of cybersquatting by clear and convincing rather than preponderance of the evidence; and 2) providing a single remedy of suspension for the duration of the registration as opposed to cancellation or transfer of domain registration to rights holders. (Rights holders have the option to continue the suspension for an additional year at prevailing rates, Procedure 10.3).
How does one measure success of a rights protection mechanism? If by numbers, it has to be admitted the URS has not been enthusiastically embraced; at least, as measured by the number of rights holders who could have qualified for the URS but instead have opted for the UDRP. From 2013 to date rights holders filed less than 1,000 URS complaints, somewhere in the region of 220 per annum overwhelmingly with the Forum; 46 withdrawn before decision but a 93% or greater percentage success rate for rights holders suspending infringing domain names.
On a rough count, judging from the first six months of 2018 the number of rights holders commencing proceedings under the UDRP involving domain name with new gTLDs will be twice or more the number of complaints filed under the URS for the same period of time. Through the first week of June 2018, roughly 260 new gTLD complaints have been filed under UDRP against 90 for URS. If that number continues there will be over 500 UDRP complaints for new gTLD infringements by the end of 2018 (WIPO and Forum) and 200 or less for the URS process (that is, filed with the Forum. Complaints filed with the other two URS providers can be counted on one hand).
Of new gTLDs adjudicated by URS (Forum) Examiners, respondents prevailed in less than 7% of the claims (61 denials against 758 suspensions), which should give cheer to rights holders. This is for the entire four-plus years of its existence. Rights holders claiming cybersquatting with new gTLDs under the UDRP rarely fail of success, although it is instructive when they do.
Can it be assumed otherwise than rights holders prefer the UDRP process? Is it because of the remedy or the burden of proof? Or, for some other reason? Under the UDRP, rights holders have uniformly chosen transfer over cancellation. It must be that the principal inhibitory reason for opting for the UDRP is either or both the standard of proof or the sole remedy of suspension. Suspended domain names return to the pool of general availability once the registration expires, thereby risking a repeat of cybersquatting by the same respondent or someone else (which has happened).
One of these rarities of respondent prevailing in both the URS and UDRP, from last year but emblematic, involved the BLOOMBERG mark. As a general observation, respondents prevail in the URS and UDRP when rights holders fail to submit sufficient evidence of bad faith. In Bloomberg Finance L.P. v. zhang guo jie, FA1703001721683 (Forum March 31, 2017) (<Bloomberg.site> the URS Examiner explained that the “Complaint is . . . devoid of any allegations or proof of facts tending to show, even prima facie, either that Respondent has no right to or legitimate interest in the <bloomberg.site> domain name, or that the domain name was registered and is being used by Respondent in bad faith.”). In the subsequent UDRP proceeding [FA1704001727926 (Forum June 8, 2017)], the Panel held “even taking account of the public use which has been made of the trademark, it is a common family name which might remain open to use in good faith by any number of traders… This is not a case of an invented word with no connotation other than the goods or services of a single trader.”
One explanation for rights holders preferring the UDRP is that, overall, it is easier and less risky where the URS result is not quite as predictable as one would wish, even assuming suspension is the proper remedy. For example, in Commonwealth Bank of Australia v. WhoisGuard Protected, WhoisGuard, Inc. / Lord Oxford, D2018-0769 (WIPO May 29, 2018) (<bankwest.site> and bankwest.website>) it is likely (based on the Respondent’s emails denying bad faith) that a URS Examiner would have denied the complaint for <bankwest.site> even if it granted suspension for the dot website domain name. The Respondent stated in informal emails that “the disputed domain names are spoonerisms, and that the planned use of the disputed domain names is in respect of a website about Israel’s West Bank dispute.” The UDRP Panel rejected Respondent’s assertions:
The Panel further finds the Respondent’s assertion that the planned use of the disputed domain names is in respect of a website concerning Israel’s West Bank dispute, an assertion wholly unsupported by any evidence, incredible. The Panel is also, incidentally, unable to discern how the disputed domain names are said to be spoonerisms.
It should also be obvious that many new gTLDs have particular relevance to specific businesses. So, for example, . tech, .shop, .support, .deals, .design, and .tours as extensions to domain names identical to marks in industries or businesses for which they would be appropriate are (absent explanations for using names corresponding to marks) clearly infringing, but if the combination of domain name and gTLD is also recognized as a valuable addition to a Complainant’s portfolio of domain names the strategic remedy of choice would certainly be transfer rather than suspension.
Thus, in STS Student Travel Schools AB v. Nordmann Nordmann, D2018-0736 (WIPO May 18, 2018) (<sts.tours>) and Compagnie Générale des Etablissements Michelin v. WhoisGuard, Inc., WhoisGuard Protected / Saad Zaeem, Caramel Tech Studios, D2017-0234 (WIPO April 3, 2018) (<michelin.design> it makes sense to opt for a UDRP remedy.
In STS Student Travel Schools, the Panel found it was “likely that the Respondent had knowledge of both the Complainant and the Trade Mark at the time he registered the Disputed Domain Name. This conclusion is reinforced by the content of the website at the Disputed Domain Name, being PPC links relating to schools and education.” In Compagnie Générale des Etablissements Michelin, it is possible (and this may have been counsel’s concern) that the extension .design which is not logically associated with Complainant’s business could have failed in a URS proceeding. Complainant could also have had a strategic reason, namely that it saw a benefit to having the .design and the UDRP was the only route for getting it. In fact, although Respondent did not formally appear it did state that it planned to develop a website for furniture, which would most likely have resulted in a failed URS even though there was some evidence of bad faith use; that is, the Examiner could have accepted the informal defense as an “open question of fact” (URS Procedure 8.5).
For the UDRP Panel, however, bad faith was predicated on Respondent’s failure under Paragraph 4(c)(i) to provide any evidence of “demonstrable preparations” and under 4(b)(iv) the use of the resolving website that “provided links and ‘click through’ to other sites which offer products some of which may compete with those of the Complainant.” Respondent’s argument that it was not responsible for the registrar earning revenue failed to persuade the Panel because “[i] is well established that where a domain name is used to generate revenue in respect of ‘click through’ traffic, and that traffic has been attracted because of the name’s association with the Complainant, such use amounts to use in bad faith [regardless who benefits].” URS Examiners are less likely to invoke the full reasoning of UDRP Panels and more likely to apply the enhanced evidentiary standard to deny suspension.
The heavier burden of clear and convincing evidence is reflected in the most recent URS denial, Skechers U.S.A. Inc. II v. Privacy Protect, LLC (PrivacyProtect.org), FA1805001786732 (Forum June 7, 2018), FA1805001786732 (Forum June 7, 2018). In this dispute, the Examiner found that even though the domain name resolves to a parking page which according to the screen shot provided by the Complainant displays no information “it seems that there is an active literary website managed by Andres Thomas Conteris and there is not any clear evidence which shows the Respondent’s commercial gain over the disputed domain. In this respect, the Examiner finds that the bad faith of the Respondent is not proven by the Claimant.” (For Skechers, incidentally, this is a rerun, although from a different Respondent, from a failed URS in 2015. It has prevailed in 13 URS proceedings, but never gone to the UDRP for new gTLD complaints, but has filed and been successful in several country code and .com complaints.
The point that needs emphasizing, however, is the reason for rights holders choices. Clearly, the reduced time to remedy under the URS is not a major incentive, but the most likely disincentive is either the remedy or the combination of remedy and standard of proof where it is likely the URS Expert will deny the complaint either for lack of concrete proof or because any doubt about there being an “open question of fact” must be charged to Complainant. If there is any risk of denial, the obvious route would have to be the UDRP; a little more expensive, not quite as “rapid” but greater certainty where there is risk, and with a better remedy if transfer makes strategic sense.
Written by Gerald M. Levine, Intellectual Property, Arbitrator/Mediator at Levine Samuel LLP