Domain Name Dispute Resolution Options: Features, Benefits, and Other Considerations for Choosing Between UDRP and URS

Domain Name Dispute Resolution Options: Features, Benefits, and Other Considerations for Choosing Between UDRP and URS by the Internet Corporation for Assigned Names and Numbers (“ICANN”).

Both procedures provide a legal framework for resolving disputes between a domain name holder and a third party regarding the improper registration and use of an Internet domain name. Compared to court proceedings, the UDRP and URS offer faster and more cost-effective alternatives for resolving domain-related disputes.

But how do you determine whether UDRP or URS is the better alternative in a particular set of circumstances? Below we describe some of the main features of each system and offer practical suggestions for choosing between the two options.

UDRP – Uniform Domain Name Dispute Resolution Policy

The UDRP applies to all “new” generic top-level domains (gTLDs), such as .club and .web, other gTLDs under contract with ICANN, such as .com and .org, and domains country code top level (ccTLD). ), such as .eu and .se, which have adopted the UDRP policy on a voluntary basis.

The UDRP process begins with the complainant filing a complaint with an ICANN-approved dispute resolution service provider for abusive domain name registration. For a complaint to succeed, the complainant must establish that the following conditions are met:

  1. the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights
  2. the respondent has no right or legitimate interest concerning the disputed domain name
  3. the disputed domain name has been registered and is used in bad faith

Where Complainant owns a registered national or regional trademark or service mark, this prima facie satisfies the first threshold requirement of having trademark rights. Where a domain name incorporates the entire trademark, or where at least one dominant characteristic of the relevant trademark is recognizable in the domain name, the domain name will normally be considered identical or confusingly similar to this brand.

With respect to the second requirement of the UDRP, the plaintiff must prove prima facie that the defendant lack of legitimate rights and interests in the disputed domain name. In this regard, the onus is on the defendant to demonstrate the contrary.

The grounds available to the Respondent to demonstrate its rights or legitimate interests are not exclusive.

This is also the case for the third UDRP requirement regarding domain registration and use in bad faith, for example, when the domain name is registered primarily for the purpose of disrupting a competitor’s business.

The UDRP process normally consists of a single round of pleadings without the possibility of discovery. In addition to the Complaint and Response, the Panel may request, in its sole discretion, other statements or documents from either party.

Both parties retain the ability and right to pursue legal proceedings during an ongoing UDRP proceeding or following a UDRP decision.

URS – Uniform Rapid Suspension

The URS procedure includes a set of rules very similar to the better known UDRP. The URS system was intended to complement the UDRP process by providing lower costs and a faster path to redress for rights holders, especially in the clearer cases.

The URS procedure applies to “new” gTLDs and certain old TLDs that have integrated the URS procedure, such as .org, .info and .jobs, and certain ccTLDs (eg .pw).

Under the UDRP process, a decision can be expected in about two months. In contrast, the URS process, from filing the complaint to issuing and implementing a final decision, can take less than three weeks. Moreover, the official fees for the URS start at around 375 euros compared to around 1500 euros for the UDRP.

As with the UDRP, the URS process begins with the complainant filing a complaint with an ICANN-approved service provider. There are some differences in the conditions required for a complaint to be successful, but basically the same three conditions apply.

Upon closer inspection, seemingly minor differences in the systems can potentially affect the outcome. For example, the URS only recognizes word marks while the UDRP has no similar limitation. In addition, the URS requires the complainant to provide “clear and convincing” evidence, while the UDRP standard is lower and only requires a “balance of probabilities”. This difference underscores the goal of the URS to be applicable in “the most obvious instances of infringement.”

Unlike the UDRP, the URS procedure also includes its own internal appeal process so that either party can appeal the decision. The most notable difference between the procedures, however, is that the only remedy available under the URS is suspension of the domain name, rather than cancellation or transfer.

Choose between UDRP and URS

Compared to court proceedings, the UDRP and URS offer faster and more cost-effective alternatives for resolving domain name disputes. Proceedings are also considerably more informal than disputes and are specifically set up with domain issues in mind. The adjudicators in these processes are experienced in trademark and domain matters and the remedies available are more limited in scope compared to litigation, but make up for this in speed and much lower costs.

In deciding between the UDRP and the URS, the first consideration should be whether it is important that the domain be transferred to the complainant or whether the suspension is sufficient. Often, the complainant wants the domain in question to be transferred. However, the URS procedure should be considered particularly in circumstances where the number of “clear” cases of abusive registrations is increasing and where suspending the domain as soon as possible is essential.

So, while there are several differences between the two systems, in general, a trademark holder should select UDPR when retrieving a desirable domain name is the primary goal. In contrast, a trademark holder can select the complementary URS to suspend less desirable domain names that they have no interest in acquiring and using themselves.