The URS is a domain name dispute resolution procedure that applies to all global top-level domains (“gTLDs”) that went into effect in 2013 and later. The URS does not apply to most traditional TLDs, including .com, .net and .org. However, it is important because it is intended to provide a lightning fast, inexpensive method by which trademark holders can stop clear cases of cybersquatting. In addition, as many of the new gTLDs are becoming vital to the Internet, the URS is becoming more and more important.
The process that the URS follows is illustrated below:
To prevail in a URS proceeding, a Complainant must prove all of the following by clear and convincing evidence:
- the registered domain name is identical or confusingly similar to a word mark: (i) for which the complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed;
- that the registrant has no legitimate right or interest to the domain name; and
- that the domain was registered and is being used in bad faith.
To establish the first element, which is that the domain name is identical to, or confusingly similar to a mark that the mark holder has rights to, the arbitrator will directly compare the trademark and the challenged domain name to determine if they are confusingly similar. It should be noted that the URS is only applicable to registered trademarks with very limited exceptions.
Turning to the second element, the Complainant must establish by clear and convincing evidence that the registrant has no legitimate right or interest in the domain name. This is a higher burden than is required by the UDRP. Nonetheless, Panels generally will not recognize rights based merely on registration of a domain name.
With regards to the third element, namely registration and use in bad faith, the Complainant must establish that the registrant lacked a legitimate purpose when registering the domain. For example, if the domain name was registered with the purpose of selling it to the mark holder.
Use of a domain in bad faith includes “parking” a domain, which can include sporadic use, as well as allowing infringing third party material to be placed on the site, including automatically generated third party pay-per-click advertising. In addition, in certain circumstances, the use of third party privacy registration services can be a factor in determining bad faith.
In addition, the URS only allows for suspension of a domain. Accordingly, a mark holder cannot get a domain name transferred to them pursuant to the URS.
While the URS may sound as if it is an inferior proceeding to the UDRP, it has a number of advantages. First, it is far less expensive than the UDRP; in particular, the filing fee, as of now, is a mere $375 for up to fourteen challenged domains, as long as they are all commonly owned. Second, it is lightning fast – decisions are issued in about seventeen days after filing. In addition, after the URS is used to freeze a domain, a UDRP complaint can be filed to effect a transfer, and the URS decision filed along with the complaint. This allows for immediate relief to the mark holder along with all of the benefits of the UDRP. Therefore, one approach is to obtain a quick resolution via the URS proceeding while initiating the UDRP proceeding to get a domain name transfer.
The Law Offices of Konrad Sherinian, LLC is pleased to offer URS domain name services on a flat fee basis. Our legal fee is $3150 per challenged domain; note this is in addition to the URS’s provider’s fee. For respondents, our legal fee is $4250 per challenged domain. Contact us today, and we can advise you of your options.