ICANN’s Uniform Rapid Suspension System

By Eric Misterovich

ICANN’s new Uniform Rapid Suspension System (URS) is a domain dispute resolution and rights protection mechanism that is intended to complement the existing Uniform Domain Name Dispute Resolution Policy. The Uniform Rapid Suspension System is intended to serve as a lower cost dispute resolution mechanism for trademark owners faced with clear trademark rights violations, and the only remedy provided by the URS is the suspension of the domain name. The URS proceedings are instituted electronically by filing with a URS provider. Current providers include the National Arbitration Forum and the Asian Domain Name Dispute Resolution Center.

 

A URS complaint must contain the name and address of the registrant, the name and address of the complaining party, the domains subject to the dispute, the trademarks of the complaining party, and a justification for the request to suspend the infringing domain name. To show that suspension is proper, a complainant must show:

 

  1. That 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;
  2. That the Registrant has no legitimate right or interest to the domain name; and
  3. That the domain was registered and is being used in bad faith.

 

Bad faith registration may be proven by the following (non-exclusive) forms of evidence:

 

  1. Registrant has registered or acquired the domain name primarily for the purpose of selling, renting or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of documented out-of pocket costs directly related to the domain name; or
  2. Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that Registrant has engaged in a pattern of such conduct; or
  3. Registrant registered the domain name primarily for the purpose of disrupting the business of a competitor; or

 

By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other on-line location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.

 

To establish that the domain name was not registered in bad faith, the respondent may establish:

 

  1. Before any notice to Registrant of the dispute, Registrant’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
  2. Registrant (as an individual, business or other organization) has been commonly known by the domain name, even if Registrant has acquired no trademark or service mark rights; or
  3. Registrant is making a legitimate or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

 

If the complainant establishes that the domain was registered in bad faith, the registry operator will suspend the domain name, which will remain suspended throughout the registrant’s registration period and will not resolve to a website. The domain name will redirect to an informational website about the URS policy and the WHOIS information associated with the domain name will continue to reflect the information of the registrant. The domain name cannot be transferred, deleted, or modified for the life of the registration.

 

If the registrant believes that the URS decision was in error, the registrant has an opportunity to appeal. This appeal is based on the existing record, but additional evidence may be submitted upon the payment of an additional fee provided the evidence pre-dates the complaint. An appeal must be filed within 14 days of a final URS determination, and any response to the appeal must be submitted within 14 days after the date the appeal was filed.

 

If you seek to file a complaint under the Uniform Rapid Suspension System, or if you have been named as a respondent in a URS dispute, contact the domain dispute attorneys at Revision Legal today at 855-473-8474.

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