The URS: What Is It Good For?
Legal News & Analysis - Asia Pacific - Intellectual Property
29 May, 2016
Despite the Internet Corporation for Assigned Names and Number (ICANN) introducing the Uniform Rapid Suspension (URS) system to help brand owners enforce their rights in the new generic top-level domains (gTLDs), the numbers so far suggest that it has not had the impact expected. Since its late 2013 launch until February 2016, there have only been about 400 URS cases filed, in contrast to 418 Uniform Domain Name Dispute Resolution Policy (UDRP) applications filed on new gTLDs from just January through October 2015.
We took a closer look at why brand owners aren’t using the URS. Some key trends we see are:
- [OnlineEnforcement] Suspension versus recovery. Many prefer the ability to actually take possession of the domain name in question, which the URS does not allow. With the URS, the best outcome you can hope for is temporary suspension of the name which creates worry that after the suspension is up, the domain might again fall into the hands of a cybersquatter.
- Burden of proof. Past cases have demonstrated that even possessing a strong, distinctive trademark may not be enough to succeed under the URS. With its higher burden of proof and 500-word limit, the URS is meant to address only clear-cut cases of infringement. And in situations where there are open questions of fact, or room for interpretation on how the domain will be used, a panel is more likely to rule against you.
Brand owners should always weigh each infringement situation to determine if the URS makes sense and will meet their needs. Here are some situations when we believe the URS is not a good option:
- The domain name is an exact match to your trademark, in a new gTLD that is relevant to your brand (and therefore getting the domain transferred would be more desirable).
- The domain’s website is not being used to target your brand, or it simply is not being used.
- Your trademark is not distinctive.
- There are open questions of fact, or the registrant has some rights to the domain (e.g. freedom of speech considerations).
- When finality of decision is important; the URS allows appeals from the registrant or trademark owner.
- The domain registration will soon expire.
However, the faster, cheaper URS may present a better, more attractive option under these circumstances:
- When the domain is relatively unattractive—both to the brand owner and perhaps cybersquatters—for example including hyphens or multiple terms, thus making it “clunky.”
- If the TLD of the domain is completely irrelevant to the brand owner—that is, the brand owner may not wish to take ownership of the domain and incur recurring renewal fees and other costs, but wants to get it out of the hands of the registrant.
One of the biggest criticisms facing the URS is the fact that its only remedy is temporary suspension of the domain for the duration of its current registration (plus an additional year if the brand owner is willing to pay the renewal costs). Brand owners thus feel as though they will have to engage in a never-ending cycle of domain monitoring and repeated future enforcement.
One industry suggestion for strengthening the URS’ appeal to brand owners is to allow for a longer period of suspension, thus helping to lessen the need to continuously monitor domains that have been suspended. Another suggestion is that the URS be expanded to legacy gTLDs—would this enforcement mechanism be more attractive if available on a .com registration?—and ccTLDs (other than .pw, which has already adopted the URS).
ICANN, noting that it “wishes to increase the consistency of registry agreements across all gTLDs,” has seemingly begun contemplating such a change, at least in a more limited scope. Last year it included the URS into updated registry agreements for legacy gTLDs such as .pro, .travel, and .cat (but not yet .com). And in December 2015, it also appointed a third URS provider, Italy-based MFSD Srl. This is the first URS provider based in Europe.
These recent changes perhaps hint that further expansion of the URS may be on the horizon. This could certainly help to make it a more attractive enforcement option for brand owners.
Read more: Keeping up: How to adapt your enforcement strategy for the new domain era
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