A New Domain Name Dispute Alternative: The Uniform Rapid Suspension System (URS)
The Uniform Rapid Suspension System (URS) was created as part of ICANN’s new gTLD program. A gTLD (generic top-level domain) is the “suffix” at the end of a domain name, most commonly .com, .org, .info, .biz and .us. Prior to the new gTLD program there were 23 gTLDs in operation. The new gTLD program is expected to result in the launch of approximately 700 additional gTLDs. More than 400 new gTLDs have already been delegated, with the majority of these in operation. The expansion of the gTLD namespace exponentially increases opportunities for cybersquatting, the practice of registering domain names that infringe another’s trademark rights. In response to concerns voiced by trademark owners over the expanded namespace, ICANN developed the URS as an alternative to the existing Uniform Domain Name Dispute Resolution Policy (UDRP). The URS is intended to provide a quicker and cheaper alternative to the UDRP. This article provides an overview of the differences between the URS and the UDRP and offers trademark owners a “road map” for determining when to consider using the URS instead of the UDRP.
The URS and UDRP offer relief to trademark owners combatting use of their trademarks (or confusingly similar marks) within domain names. Both provide procedures for requesting that an independent arbiter remove an allegedly infringing domain name from the control of the domain name registrant (owner). One of the primary differences between the URS and the UDRP is that the disputed domain name is transferred to a prevailing mark owner under the UDRP. Under the URS, a prevailing mark owner is entitled only to suspension of the domain name. While this means that a registrant infringer can no longer use the domain name, it also prevents a mark owner from exercising control over the disputed domain. Thus, if a mark owner wants to obtain an infringing domain name for its own use, the URS is not a viable option.
The elements a mark owner must prove are essentially the same under the URS and the UDRP, namely:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the mark owner has rights; and
The registrant has no rights or legitimate interests in the domain name; and
The disputed domain name was registered and is being used in bad faith.
However, there are two critical differences between the showing required under the procedures. The UDRP allows a trademark owner to rely on common law trademark rights to establish the first element, whereas the URS requires that the mark be (i) registered; (ii) validated through court proceedings; or (iii) specifically protected by statute or treaty. Except in rare cases, this means a mark owner must own a valid registration to prevail in a URS proceeding. Accordingly, the URS is not an option for owners of non-registered trademarks.
The other significant difference between the showing required under the procedures is the burden of proof. While not specified in the UDRP, arbiters generally apply a “preponderance of the evidence” standard to UDRP disputes. On the other hand, the burden of proof under the URS is “clear and convincing” evidence. The difference between the standards should not be understated and really comes into play on the second and third elements under the URS, namely that the registrant lacks rights or legitimate interests in the domain name and that the domain name was registered and being used in bad faith.
In practice, if there is not evidence of clear cut bad faith infringement of the mark by the registrant, a mark owner should opt for the UDRP. This is because it is more difficult to show bad faith registration and use of a domain name under the clear and convincing standard of the URS than the preponderance standard of the UDRP. By “clear cut bad faith infringement,” I mean that the domain name could not plausibly refer to anyone or anything but the mark owner or that the website content at the disputed domain name clearly shows an attempt by the registrant to capitalize on the goodwill of the mark owner. Examples of domain names that could not plausibly refer to anyone or anything but the mark owner are a domain name consisting of a coined mark, such as <pepsi.com>, or a domain name combining a distinctive mark with a descriptive term for the mark owner’s goods or services, such as <deltafaucets.com>.
Early URS decisions indicate that where a trademark also serves as a “generic” term, i.e., has a dictionary definition, a mark owner may need to rely on the content of the website to show bad faith registration and use. This does not mean that the trademark is “generic” as that term is usually used in trademark law. It means that a mark that is distinctive or even famous for the goods or services with which it is used, e.g., COACH for handbags, is generic in some other sense, e.g., COACH for the head of an athletic team. Therefore, if a mark is a “dictionary” term, a mark owner will usually need to include evidence of website content demonstrating the registrant’s bad faith to prevail in a URS proceeding. Such content may consist of use of the website to imitate the mark owner, to offer counterfeit goods or services, or to offer competing goods or services. Early indications are that parked pages at disputed domain names are not alone sufficient to show bad faith under the clear and convincing standard of the URS.
There are several notable differences between the URS and the UDRP other than burden of proof. For one, the URS filing fees are lower. The filing fee for a URS complaint is $375, while the fees for a UDRP complaint start at $1300 or $1500, depending on the provider. Mark owners that elect the URS and use outside representation likely also see significant cost savings in the drafting of the complaint because the URS limits a complainant’s argument to 500 words, whereas UDRP complaints are limited to 15 pages or 5,000 words, also depending on the provider. This is a bit of a double-edged sword, however. Because the URS only allows the complainant 500 words, it is not suitable for domain name disputes with complicated issues of fact. Moreover, the domain name registrant in a URS proceeding is allowed 2,500 words for its response. Accordingly, the URS is not a good option if the mark owner believes the domain name registrant may be sophisticated in trademark matters.
Along with the lower filing fee, the intended benefit of the URS is that decisions are issued more quickly than a typical UDRP decision. UDRP decisions are typically issued within two months of the complaint filing date. After a URS complaint is filed, the registrant has fourteen days to furnish its response. A decision is expected within three business days of the earlier of the filing of the response or the expiration of the response period, but, “absent extraordinary circumstances,” no later than five business days after the response is filed. Thus, a typical URS decision should issue within three weeks of the complaint filing date. While this means URS decisions should, on average, issue 5-6 weeks earlier than UDRP decisions, it brings us to another important difference between the URS and the UDRP. UDRP decisions cannot be appealed to the provider, but URS decisions may be appealed within fourteen days of the decision. With the possibility of appeal comes a possibility that a final decision in a URS proceeding could come after a UDRP decision would have issued, although early data suggests URS appeals may be rare.
To recap, a mark owner should elect the UDRP over the URS if:
The mark in question is not registered;
The mark owner wants to obtain the disputed domain name;
There is not “clear cut bad faith infringement” of the mark in question; or
The registrant of the domain name may be sophisticated in trademark manners.
This raises the question whether the URS is a workable solution for trademark owners. While the URS may provide mark owners with some cost savings and a faster resolution, filing a URS complaint is a riskier play due to the higher burden of proof and the risk of creating bad precedent for a mark owner’s mark and brand through a URS loss. The latter risk is exacerbated by the apparent inclination of URS panels to apply the terms “generic” and “dictionary word” to marks that are not at all “generic” in the trademark sense. Because of these risks, the flow chart accompanying this article does not reach the conclusion that a mark owner “should” file a URS complaint, rather that, if certain conditions are met, it may be appropriate for a mark owner to consider filing a URS complaint over a UDRP complaint.
 See UDRP § 4(a); URS Procedure § 1.2.6.
 See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, ¶ 4.7, available at http://www.wipo.int/amc/en/domains/search/overview2.0/#47.
 URS Procedure § 8.2.
 See, e.g., Heartland Payment Systems Inc. v. Kyle Ramsey, NAF 1547394 (March 27, 2014) (although the registrant of the domain names <heartland.ventures> and <heartland.holdings> defaulted, the panelist found that the websites at the domain names were parked pages and that the term “heartland” was a “dictionary word,” leading to its holding that the mark owner had not met its burden of proof on the element of bad faith registration and use).
 See id.
 Compare URS Procedure § 1.2.7 with WIPO Supplemental Rules for UDRP ¶ 10 and NAF Supplemental Rules to ICANN’s UDRP ¶ 4(a).
 URS Procedure § 5.4.
 URS Procedure § 9.6.
 URS Procedure § 12.