The Uniform Rapid Suspension Policy and Rules Summary

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Sharlene Hunter
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1 The Uniform Rapid Suspension Policy and Rules Summary The Uniform Rapid Suspension System ( URS ) is one of several new Rights Protection Mechanisms ( RPMs ) being implemented alongside the new gtld Program. The URS is intended to complement the Uniform Domain Name Dispute Resolution Policy ( UDRP ) by offering lower-cost, expedited relief to rights holders in instances of clear-cut infringement. I. Procedure As with the UDRP, a URS proceeding begins by filing a complaint electronically with a URS provider. URS filing fees are expected to be substantially lower than UDRP fees, which can range from about $1,000 to over $7,000, depending on the provider, the number of panelists, and the number of domains involved. 1 ICANN has set a target price range of $300- $500 for URS filing fees, but the fees have not yet been set. The requirements for a URS complaint are essentially the same as those in a UDRP proceeding. 2 A properly filed complaint must allege: (1) that 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 and 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) 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. 3 Any elaboration beyond these required criteria is subject to a Spartan 500-word limit. 4 This limit may seem severe at first glance, particularly when contrasted with the UDRP, which omits any such word-limitation, 5 but it is in keeping with the function of the URS as a mechanism for instances of clear-cut infringement. 1 See, e.g., Czech Arbitration Court, UDRP Supplemental Rules, Annex A: Fee Schedule (indicating fees ranging from $500 for a one to four domain dispute with one panelist, to $7,100 for a dispute of up to 50 domains and a three-member panel). 2 Compare URS Procedure, art with ICANN, Uniform Domain Name Dispute Resolution Policy, art. 4(a)- (b) (Oct. 24, 1999), [hereinafter UDRP Procedure] 3 ICANN, Uniform Rapid Suspension System, art (Mar. 1, 2013), applicants/ urs/procedure-01mar13-en.pdf [hereinafter URS Procedure]; id. art (a)-(d) (describing circumstances that demonstrate bad faith registration). 4 URS Procedure, art Word limits are subject to supplemental rules issued by UDRP providers.

2 Within two business days of receiving a complaint, the URS provider will conduct an Administrative Review for compliance with the filing requirements. 6 If a complaint is deemed non-compliant it will be dismissed without prejudice, and the initial filing fees will not be refunded. 7 The URS is much more unforgiving than the UDRP in this regard. A UDRP Administrative Review is conducted in three calendar days, and a non-compliant complaint is permitted amelioration within five calendar days before being subject to dismissal. 8 This strict compliance requirement should help to keep URS fees reasonable, and may operate as a both a filter and a deterrent to frivolous claims and claims more properly submitted under the UDRP. If a complaint passes the Administrative Review, the URS provider will notify the relevant registry operator, which must lock the domain within twenty-four hours. 9 Once the domain is locked, the provider must notify the registrant of the complaint within twenty-four hours. 10 The registrant must then file a response, limited to 2,500 words, within fourteen calendar days from the date the Provider sent notice. 11 In contrast to the URS, the UDRP Policy and Rules establish a response period of twenty calendar days, 12 and do not expressly provide a maximum time period for a response extension, nor do they limit response length. 13 The URS proceeding is conducted by a single examiner, selected by the provider. In contrast, the UDRP s examining system is more complex, and may consist of either one panelist selected by the UDRP Provider, or a three-member panel selected jointly between the provider and the parties. 14 The streamlining of the URS examination reduces costs, and may help reduce the length of the proceeding by eliminating panel selection. 6 URS Procedure, arts URS Procedure, art ICANN, Uniform Domain Name Dispute Resolution Policy Rules, art. 4(a)-(b) (Oct. 30, 2009), [hereinafter UDRP Rules]. 9 URS Procedure, art URS Procedure, art URS Procedure, art Upon request, the provider may grant the registrant an extension of as many as seven calendar days to file a response if there is a good faith basis for doing so, and if the request is received during the response period, after default, or not more than thirty calendar days following a determination of default by the provider. URS Procedure, art UDRP Rules, art. 5(a). 13 See UDRP Rules, art. 5(b), (d). 14 See UDRP Rules, art. 6. A Complainant or Registrant may request a three-member panel. If a three-member panel is requested, each party submits a list of three candidates from the Provider s approved panelist list to serve as a member of the panel. In this manner, one member is chosen by Complainant, one by Respondent, and one by the Provider. If a three-member panel is requested by the Registrant, the Registrant must split the fees equally with the Complainant. See id.

3 In cases where the registrant does not file a response (default), the complaint will proceed to the examiner for review on the merits. 15 If the examiner rules in favor of the complainant, the registrant has the right to seek a de novo review of the decision. The registrant may do so by filing a response at any time within six months of the date of default, and may request an extension of an additional six months if the request is made within the initial six month period. 16 The filing of such a response is not considered an appeal ; rather, the case is considered as if the registrant had responded to in a timely manner. 17 The UDRP does not provide this right explicitly, but it does provide that exceptional circumstances may excuse a registrant from filing a response within the required time period. 18 While perhaps not ideal, the timelines anticipated by the URS guidelines reflect a procedure substantially quicker and more economical than the UDRP. II. Standard of Proof To prevail in a URS proceeding, a complainant must demonstrate by clear and convincing evidence that no genuine issue of material fact exists as to any of the elements of the claim. 19 The UDRP, by contrast, requires only that a complainant prove each element of a claim by a preponderance of the evidence, and permits an arbitration panel greater leeway than an examiner in what evidence and principles are permitted consideration. 20 This standard of proof represents perhaps the most significant difference between the URS and UDRP. Because the URS is designed to be used only against transparent trademark abuse, it does not permit open questions of fact. This allows URS determinations to made much more quickly than a UDRP, within three to five business days from the start of an examination. III. Remedies If a URS complainant is successful, the relevant registry will suspend the domain name for the balance of the domain s registration period. During suspension, the domain will not resolve to the registrant s web site, but to a page providing information about the URS. 21 Any transfer, deletion, or modification of the domain will be disabled. Unlike a UDRP complainant, a successful URS complainant cannot obtain a cancellation or transfer of the domain. This renders the URS unsuitable for claimants that 15 URS Procedure, art URS Procedure, art URS Procedure, art UDRP Rules, art. 14(a). 19 URS Procedure, arts UDRP Policy, art. 4(a); UDRP Rules, art. 15(a). 21 URS Procedure, art

4 wish to recover the domain at issue. While a successful complainant may extend the registration period for an additional year at commercial rates, the domain cannot be recovered except by registration following the domain s expiration. If an examiner denies the complainant relief, the URS proceeding will be terminated without prejudice, and the domain will be unlocked with full control returned to the registrant. Following an adverse decision, a complainant may institute a URS appeal, a UDRP proceeding, or a court proceeding. 22 IV. Appeal Either party to a URS may seek a de novo appeal within fourteen days of default or an adverse determination. A URS appeal will be conducted by a panel selected by the provider, as opposed to a single examiner. The appellant will bear the cost for appeal, but those fees have not yet been specified. An appellant must identify the specific grounds on which the party is appealing, including why the appellant claims the examiner s determination was incorrect. 23 Upon payment of a fee, in addition to the appeal filing fee, an appellant may introduce new admissible material evidence, provided the evidence clearly pre-dates the filing of the complaint. 24 An appellee s response, if any, must be filed within fourteen days following the filing of an appeal. 25 For the duration of the appeal a domain will remain locked or unlocked based on the outcome of the prior determination. 26 IV. Conclusion In sum, the URS, while imperfect, will undoubtedly prove useful to brand owners and trademark practitioners. Low cost and the prospect of speedier resolution are enticing advantages, even if they come at the expense of more robust remedies. From start to finish, a URS proceeding may take as little as sixteen days assuming a same-day Administrative Review/Locking/Notification period, a 14-day Response period ending in default, a same-day determination, and no further action by the registrant. The URS s more demanding standard of review and its limited remedies restrict its use against many infringers, but these shortcomings should not overshadow what is ultimately a welcome addition to the trademark enforcer s toolkit. 22 URS Procedure, art URS Procedure, art URS Procedure, art URS Procedure, art URS Procedure, art

For GNSO Consideration: Uniform Rapid Suspension System (URS) October 2009

For GNSO Consideration: Uniform Rapid Suspension System (URS) October 2009 Contents Introduction....... 1 Part I Draft Uniform Rapid Suspension System ( URS ) Procedure.....4 Part II Draft Applicant Guidebook