Feature By Brian Beckham IP equals opportunity. IP equals power. Exploring the URS as a Read why. trademark enforcement option for new gTLDs

The Uniform Rapid Suspension system, and its are calling for ICANN to review the underlying reasoning used big brother the UDRP, are the key tools available by a handful of objection panellists. In future new gTLD rounds, ICANN may end up considering instituting objection procedure to trademark counsel to help to stem the tide of improvements such as: infringement in new gTLDs. However, it is crucial to • a threshold review (akin to a motion to dismiss); identify the pros and cons of each – and follow the • a loser pays model where damages or at least attorneys’ fees are rules carefully available; • panellist screening; and • a formal institutionalised appeals panel. WTR readers will by now be familiar with the Internet Corporation for Assigned Names and Numbers’ (ICANN) long-incubating new Looking ahead to new gTLD launches, an important foundation for generic top-level domain (gTLD) programme. After years of policy trademark rights protection mechanisms in the new gTLD programme discussions – many aimed at minimising anticipated enforcement is the Trademark Clearinghouse, managed by Deloitte and IBM. Billed headaches – ICANN recently concluded the first of the expected as a one-stop database of trademark information, the clearinghouse 1,400 contracts authorising the operation of new gTLD registries. is beginning to see increased trademark information deposits. Such Even though around one-third of these will be trusted ‘.brand-only’ clearinghouse-validated information will form the basis for sunrise registries (eg, ‘.hsbc’, ‘.sca’ or ‘.kpmg’), and many more will not be registrations, trademark claims notices and URS cases (see box-out). obvious infringement targets (will cybersquatters register ‘ferrari458. Although it is not a prerequisite, depositing your mark in basketball’, ‘googlejobs.motorcycles’ or ‘pradabelts.surgery’?), the clearinghouse will streamline the URS process by creating an trademark practitioners are still looking at a waterfall of new gTLDs. automatic presumption of registered trademark rights. Policing their marks in potentially hundreds of new TLDs will be a It is also conceivable that one day a clearinghouse token (a signed new – if rather unwanted – reality. mark data (SMD) file) could be used in Uniform There may be ‘positive’ opportunities for savvy brand owners Dispute Resolution Policy (UDRP) proceedings. to register category-specific domain names with strong keyword value, with or without their brand in the URL (eg, ‘mercedes.auto’, Phase 2 – post-launch enforcement ‘opera.sydney’ or even ‘green.tech’). Scores of new gTLD applicants ICANN will provide several post-delegation enforcement are hoping so – and Google has finally acknowledged that such new mechanisms aimed at addressing infringing behaviour at the gTLDs may well affect the relevancy of searches. top level – namely, a trademark-based Post-delegation Dispute While some internet stability/security-based and ICANN Resolution Procedure, a community-based Registry Restrictions operational delays seem certain, brand management teams should Dispute Resolution Procedure and a Public Interest Commitment be gearing up for the road ahead. A good starting point is to Dispute Resolution Procedure. However, for rights holders which understand ICANN’s new trademark enforcement tools – and key either opted not to secure their marks during sunrise registration Subscribe to IAM now and receive: among these is the Uniform Rapid Suspension system (URS). phases or simply missed the relevant sunrise windows (time- limited advance registration windows which operate on a rolling Six issues of IAM magazine Phase 1 – launch-related enforcement basis over the next two years), the key curative trademark Instant online access Enforcement tools for avoiding abuse at the top level are nearing enforcement mechanism available in new gTLDs to combat Weekly news and editor’s by email completion. Hundreds of objections have been filed, including infringement at the second level is the URS. legal rights objections (managed by the World Intellectual Property Built on the proven foundations of the UDRP, the URS is billed as Regular supplements including IAM Patent 1000, Strategy 300 Organisation) involving allegations that a TLD is likely to infringe a lower-cost, quicker alternative to the UDRP (see box-out). Complete 10-year archive a mark, and community objections (managed by the International Chamber of Commerce), largely filed over competition concerns The URS: UDRP 2.0 for enhanced trademark enforcement? about so-called ‘closed generic’ applications. Objections were also As with the UDRP, the URS is a mandatory rights protection To subscribe go to www.iam-magazine.com/subscribe filed on string confusion and limited public interest grounds. mechanism for all new gTLDs. Given that many brand owners were, or email [email protected] However, following a handful of chaotic decisions, advocates and in some cases still are, flatly against ICANN’s Domain Name

www.WorldTrademarkReview.com December/January 2014 World Trademark Review 61 Feature: Exploring the URS

System expansion plans, one of the compromises that ICANN low cost. For the most part, those two essential design elements survived and would-be applicants have agreed on is a new streamlined the ICANN multi-stakeholder policy development process – the URS is enforcement mechanism to complement the UDRP. indeed quicker and cheaper than the UDRP. Still, several unattractive Over the past decade the UDRP has served rights holders and features were added along the way. This article highlights the good, the registration authorities well (the latter insofar as they have steered bad and the ugly of the URS, as well as the principal procedural rules. clear of the courts). However, the UDRP simply will not scale to a Finally, it considers some of the key issues that practitioners may be Domain Name System with hundreds of new TLDs. Thus, in 2009 considering in deciding whether to opt for the URS or the UDRP. ICANN convened an implementation recommendation team consisting of 18 trademark experts, including representatives from The good registries, registrars and non-commercial interests. As a result, the • Scope – the URS is designed for clear-cut ‘slam-dunk’ cases of URS was born (WIPO had also proposed a similar mechanism based trademark abuse (cybersquatting), and is a ‘lighter’ and hence on automatic suspension in cases of respondent default – but that quicker alternative to the UDRP. model may have been before its time). • Fees – the URS costs from $375 (at the National Arbitration The basic idea is simple: in clear-cut cases of trademark abuse, the Forum) “to the $500 range” (it is believed that the Asian Domain infringing domain name is suspended on a rapid basis, for a relatively Name Dispute Resolution Centre may charge $365 and other providers may emerge in the future). Figure 1. Graphic overview of URS • Timing – URS cases are resolved in under one month (after a formalities compliance review by the provider, there are 14 days Trademark owner completes for the registrant to respond, followed by up to five days for the online filing form made expert to write a decision). available by URS provider •  Remedy – under the URS, the domain name is suspended quickly after a decision and there is a ‘limited loser pays’ system Trademark owner submits (complaint fees are refunded in successfully defended cases where complaint (via email/ webform); pays filing fee a response is filed, and which involve 15 or more domain names).

Complaint undergoes The bad administrative compliance • Remedy – because the domain name is only temporarily review by URS provider suspended for the duration of the registration period (which can Complaint be extended by the trademark owner for up to one year, for a dismissed without Complaint satisfies No prejudice to the fee), the domain name may be re-registered later and used again filing requirements? filing of a new for infringing purposes, creating a new monitoring cycle. complaint Yes • Burden of proof – this involves three cumulative factors by clear and convincing evidence: URS provider notifies registry of the complaint; • The domain name is identical or confusingly similar to a registry ‘locks’ the domain Filing fee not word mark with demonstrable evidence of use (this can be refunded satisfied automatically via the clearinghouse SMD file, but is URS provider sends not necessary); notice of complaint to • The registrant has no rights or legitimate interests in the registrant domain name; and Registrant has 14 calendar Response filing fee • The domain name was registered and is being used in bad days from notice of required in cases faith, which can, as in the UDRP, be proven by showing complaint to electronically involving 15 or more that the registration was acquired simply for ‘extortionate’ file a response domain names purposes, is part of a pattern of cybersquatting, is primarily intended to disrupt the rights holder’s business Registrant files or intentionally confuses users for the registrant’s a response? commercial gain. Yes No • Registrant defences – in addition to the registrant defences found in the UDRP (the registrant’s use before notice of the Complaint, response and any Following the 14-day response dispute or demonstrable preparations of the domain name for supporting materials sent to period, a default case proceeds a bona fide offering of goods or services, the registrant being URS examiner for review to a default determination commonly known by the domain name or the registrant making on the merits a legitimate non-commercial or fair use of the domain name), Registrant prohibited from the URS contains an additional series of registrant defences: changing site content or Whois information •  The use is fair based on generic use of a generic or descriptive term; Decision: published on Suspension lifted • The use is fair based on tribute or criticism; URS provider’s website pending outcome • The use is consistent with the terms of a contract; •  For portfolio registrants, the domain name at issue is different Either party can, within Domain name Registrant can seek de novo from others that might otherwise form a pattern of abuse; 14 days, request a de novo temporarily relief from default by filing a • Trading in domain names, for a profit, is not objectionable in appeal (fees apply); original suspended; response up to 6 months (1 year itself; and case affirmed or overruled extendable for 1 year on request) after a decision • Pay-per-click use of the domain name is not in itself evidence

62 World Trademark Review December/January 2014 www.WorldTrademarkReview.com of bad faith (in particular, where the mark also corresponds One-minute overview: the Trademark Clearinghouse to a dictionary term). However, the use of the domain name is ultimately the registrant’s responsibility – it cannot be What is it? wilfully blind to infringement and disclaim infringing links). • Centralised database – contains validated trademark information on registered trademarks (or court-validated or treaty-protected Despite efforts by the IP community, the URS could not shake the marks) for use in launches and rights protection mechanisms for UDRP’s ‘registration and use’ requirement – as a result, some cases of 1,400 new gTLDs. infringement will slip through the cracks. • Cost saver – unlike past sunrises (‘.biz’, ‘.net’ and ‘.info’), marks are validated once by the clearinghouse, rather than with each The ugly new gTLD registry. • Registrant appeal – registrants have three bites at the apple: • Sunrise – the registration periods provide for a premium fee- • For up to 30 days after defaulting, the registrant can file a late based priority to register your exact brand as a domain name. response to appeal the decision free of charge, which creates • Trademark claims – the clearinghouse offers a temporary a month of wait-and-see for the prevailing rights holder; quasi-watch service, giving 90 days’ notice of registrations • For up to six months after a default decision (which can be corresponding exactly to your mark and including up to 50 typo extended for a further six months by a simple request), the variations if recovered in a UDRP or court case. registrant can file a late response; and • URS – see article. • For up to 14 days after an adverse decision in a case where it had responded, the registrant can formally appeal the decision. How do I use it? •  While all of these appeal possibilities must be monitored, in • Create an account – register as an individual or as an agent (the the latter two scenarios the registrant or appellant must pay latter requires a $15,000 deposit). appeal fees (thus, in true ‘slam-dunk’ cases, there should be few • Submit $150 for one mark for a one-year term (consider a three appeals). or five-year term, given the rolling launch of new gTLDs). •  De novo appeal – this cuts both ways, as either party can file such • Submit your mark data – for example, the mark, description of an appeal (for a fee) within 14 days, again creating a temporary goods and services, registration number/date and jurisdiction. monitoring obligation. • Abuse penalties – A one-year ban from being able to use the Common errors to avoid URS is imposed on rights holders which file two ‘abusive’ • Trademarks eligible for submission – registered trademarks, complaints (made solely to harass or delay) or one ‘deliberate court-validated common law marks and treaty-protected material falsehood’: marks, including non-ASCII marks (non-Latin scripts); pending • Repeat offenders may be permanently banned from using registrations and common law marks not verified by a court the URS (but their counsel are not), but simply losing a case is decision cannot be submitted. not considered to be an abusive filing; • Language – goods and services descriptions must be in the language • A finding of an abusive filing is appealable only if a panellist of the corresponding registration (a mark registered in China must abused his or her discretion in making that finding; and include a description of the goods and services in Chinese). • There is no corresponding penalty for respondent abuse of • Non-standard characters – previous sunrises have not allowed process or recidivist cybersquatting. non-standard characters such as ß (German ‘double s’) or accents (eg, é, ö); the clearinghouse requires these to be What you need to know: the rules included if they are part of the mark. So far, only the National Arbitration Forum (NAF) and the Asian • Goods and services – simply writing “see trademark registration Domain Name Dispute Resolution Centre have been appointed by certificate” will see your submission rejected (claims recipients will ICANN as URS providers. Additional providers may be appointed in see the claimed goods and services); marks from countries that do the future. Many ICANN-watchers are waiting to see what WIPO will not follow the Nice Classification (eg, Canada), should select ‘N/A’. do; one suggestion is that WIPO could become a ‘supreme court’ to • Proof of use evidence – samples should illustrate an exact match hear appeals of URS and UDRP cases if ICANN’s planned future policy to the submitted mark (eg, if the mark includes a hyphen, the review creates such a structure. Below are some high-level features of use evidence should include a hyphen); a screenshot of search the URS, the Procedural Rules and the NAF Supplemental Rules which engine results or an invoice for a trademark application is not an should be considered when filing a case. However, each case is unique adequate sample of use. and there is no substitute for reading the URS and applicable rules. • Proof of use declaration – this declaration should use Deloitte’s standard wording and the name of the submitting party must URS match the name of the trademark holder; the dated signature • Only online filing is allowed – all pleadings and case documents must be handwritten and not a digital copy. must be submitted electronically, in English, using the provider’s filing form (a tick-box complaint). • Take the time to get it right – unlike in the UDRP, there is no such as party contact details, the domain name at issue and the amendment opportunity and fees are non-refundable in the grounds for infringement, parties must: event of a compliance deficiency (a new case can be filed for a new • list the trademark class and describe the goods or services; fee). The rules also contain a ‘no further statements’ clause – new • provide their clearinghouse SMD file or submit proof of use evidence is allowed on appeal only if it pre-dates the complaint. of their mark (a declaration and a screenshot of normal use as • Properly evidence related parties – joinder is permitted, but the a mark will suffice); and relationship between the parties must be clearly demonstrated. • submit a screenshot /copy of the relevant Whois and • Attach the relevant evidence – in addition to normal information offending website. www.WorldTrademarkReview.com December/January 2014 World Trademark Review 63 Feature: Exploring the URS

• Ensure that the case is predicated based on a word mark in name could be unlocked. existing use – design marks, marks with disclaimers and • Be prepared to use an online translator – notice of the complaint common law marks are not allowed. The underlying mark must will be translated by the provider to the predominant language be a registered word mark with demonstrated use, or that is court of the country/territory for the registrant as reflected in Whois, validated or specifically protected by statute. The URS may end and responses can be submitted in that language (for the up taking a relaxed approach and allow the word elements of complainant’s information only, as a reply is not permitted). stylised marks, as the clearinghouse has done. • Remember that you cannot use a suspended domain name – the • Make the filings concise – complaint explanations are limited to page will redirect to a URS suspension information site. 500 words (registrants have 2,500 words). • Set a reminder for one year’s time to confirm that the optional • Monitor for cyberflight loopholes – the provider’s administrative one-year suspension extension has taken effect, and be sure to review must take place within two business days of receipt of the make the necessary payment. (Providers may ask you to elect complaint, and the registry has an additional 24 hours to lock this suspension extension when the complaint is filed.) the name; while the registrant will not yet be on notice, it could • Do not use the URS in line-ball cases – frivolous complainants initiate a completely unrelated transfer. A good tip is to file early face a temporary or even permanent bar from using the URS, in the week to avoid unnecessary days during which the domain which will be made public.

Figure 2. Timeline comparison: UDRP versus URS Procedural Rules • Properly evidence related parties – in cases of joinder, if the UDRP URS examiner finds that there is no good-faith basis for having joined Days Days registrants which are under a privacy shield, any unrelated Complaint filed electronically Complaint filed electronically domain names are dismissed from the complaint and fees are 0 (5,000 word limit) (500 word limit) 0 not refunded. A new case can be filed for the requisite fees. • Do not go on holiday – deadlines are based on calendar days and do not exclude weekends or holidays (the NAF Rules give some leniency here). Provider compliance review; Administrative review; • Choose the mutual jurisdiction wisely – this is the venue of either +3 request for registrar lock registry notified to lock +2 the domain the registrar or registrant as reflected at the time of filing, and is the place where a URS respondent can appeal to the courts. Deficiency Registrar No cure Some jurisdictions have taken a limited view on enforcing UDRP cure confirms opportunity opportunity lock decisions or can be used by registrants for improper tactical delay. • Pay the filing fees immediately – if not paid within one business Respondent formally notified Registry operator locks day, cases are dismissed. +1 the domain +1 • Double check active URS or UDRP cases – cases cannot overlap (the NAF system should automatically spot check for this). • Pay attention to provider-specific communication rules – this Response due within 20 days Provider receives the notice may require use of email or an online platform. +20 of lock; respondent formally +1 • Be prepared to wait an additional week – the URS allows for a notified response extension request. • Secure a signed party agreement for any suspension – suspending the case for settlement talks requires provider approval. • Check that the registrant’s site is frozen – the website content is Panel (one or three members) Response due within 14 days meant to be frozen in the event of respondent default, but as it is +5 appointed (seven-day extension request +14 possible); once received, sent unclear how this happens, it may be necessary to reach out to the immediately to panel registry or the registrar. • Set several appeal reminders – there are three appeal possibilities, which stretch as far as a year from the decision date. Parties should be notified by the provider of either of the two late Panel submits decision Panel submits decision for responses or an appeal. +14 to provider publication; suspension +3-5 maintained or released Kristine Dorrain, director of internet and IP services for the NAF, 21-23 days stated: “Based on feedback from filing parties, the NAF has created an easy-to-use online portal where parties can manage all URS and Notification of decision Various appeals possibilities UDRP case filings and procedural requests in a single, integrated case +3 to the parties, ICANN and management system.” registrar NAF Supplemental Rules • Create an online filing account – at the NAF, this can be used for

Decision implemented by URS and UDRP proceedings, and allows parties to submit filings +10 registrar (after 10-day court and to manage their cases. appeal wait period) • Ensure receipt of document filings – documents are deemed

56 days submitted when received by the NAF. (1 panellist) • Have an SMD file or proof of use ready – a complainant can

64 World Trademark Review December/January 2014 www.WorldTrademarkReview.com Addressing cybersquatting today (and tomorrow): the UDRP

Key features: • Automatic jurisdiction – the UDRP applies by contract to all second-level domain name disputes in existing TLDs since 1999. • Applies to all new gTLDs – the UDRP is a mandatory requirement for all new gTLD operators. • Cost and time effective – cases take two months on average and cost roughly $1,500 (plus any attorneys’ fees). submit its clearinghouse SMD file or evidence (a declaration and a normal specimen) of use of their registered word mark (or By the numbers: a court-validated or treaty-based mark) directly to the NAF for • Widespread adoption – used or adapted by more than 60 ccTLDs. assessment by the examiner for no additional fee. • High success rate – predictable criteria mean that 85% of brand • Know US holidays – for purposes of NAF deadlines, calendar days owners succeed. do not include US holidays or weekends. • Scores of infringement cases addressed – more than 50,000 • Be careful of the file size and type – there is a 10 megabyte (MB) cases have seen more than 75,000 infringing domain names individual file size limit (5MB is preferred), and files are accepted recovered. in the following formats: .pdf, .doc, .rtf, .jpg, .tiff, .xls, .htm/.html. • Cost of success – annual renewal fees for reclaimed domain • React quickly to object to an examiner – any challenge to an names amount to more than $1 million a year collectively. examiner must be filed within one business day. • Get the other side’s consent for settlement talks – at the parties’ Standards: joint request, the NAF will grant a 45-day suspension for • Burden of proof – three cumulative factors, as demonstrated by settlement talks (20% of UDRP cases settle). If settlement results a balance of probabilities: in a withdrawal with prejudice, both parties’ consent is required. • The domain name is confusingly similar to your trademark; • Request that any sensitive information be redacted – the • The registrant lacks rights or legitimate interests in the examiner has discretion to redact sensitive information that is domain name; and brought to his or her attention. • The domain name was registered and is being used in bad faith. • Explore the three-member panel option in appeals – in a close • WIPO overview – the jurisprudential ‘bible’ distilling decisions case, it may be advantageous to elect a three-member panel over a decade of thousands of cases, including substantive and so that you can select one of the appeal examiners (as in a procedural frequently asked questions (www.wipo.int/amc/en/ three-member UDRP case, each party selects one co-panellist). domains/search/overview). However, appeals are more costly and there is no winner refund. • Think about ‘appealing’ a URS loss to the UDRP – while not a formal appeal as such, the NAF will credit 50% of the URS filing is out of circulation, it cannot be used by anyone, including you, fees towards a UDRP appeal filed at the NAF within 30 days of the the successful trademark owner. URS case, using the same NAF online filing account. • Get the plastic out – payments must be made by credit card. Has the domain name lost you sales, harmed consumers or diluted your brand? Strategies for brand owners Even if you cannot envision using the domain name yourself (eg, For trademark counsel considering the merits of the URS versus Pfizer may not want to use the domain name ‘noprescriptionviagra. the UDRP, a range of (non-exclusive) considerations are emerging, web’), if there is a risk of harm to consumers or to your brand’s sales including the following; or goodwill and reputation, it may be better to secure the domain name through the UDRP to keep it away from would-be infringers. Will the domain name contribute to your domain name portfolio? Some brands are even using domain names reclaimed through If using the domain name to redirect to your main web presence the UDRP to put up educational sites about the social and physical or to host a micro-site would produce a positive return on perils of counterfeiting. If, on the other hand, there is little risk of investment, you should consider the UDRP, which – if successful consumer harm or lost sales or goodwill, it may be worth considering – will bring the domain name into your portfolio. The URS the URS simply to take the domain name offline temporarily. Brand suspension, on the other hand, means that while the domain name counsel may take a somewhat conservative approach and test the

Table 1. The URS and the UDRP – a quick comparison

UDRP URS

Applies to cybersquatting in all gTLDs. Applies only to cybersquatting in new gTLDs. Allows registered or common law marks, including with design Only registered word marks qualify. (In practice, this may mean ‘word elements/disclaimers. elements’). Roughly $1,500 (single-member panel for one domain name) + any $375 (single-member panel for one domain name) + any attorneys’ fees. attorneys’ fees. Complainant has 5,000 words to make its case. Complainant has 500 words to make its case. Respondent has 20 days to reply. Respondent has 14 days to reply. Decisions rendered on a balance of probabilities. Decisions rendered on ‘clear and convincing evidence’ standard. Domain name transferred to the complainant’s control (introduces Domain name suspended for the life of the registration period defensive registration costs). (extendable for one year, against a small fee). Registrant appeal possibilities (extendable for one year, against a small fee). No formal appeal, except through the courts. Either party may file a de novo appeal; there are also several registrant appeal possibilities. No penalty for abusive filings/repeat offenders. Possible one-year or lifetime ban for filing an abusive complaint; no registrant penalties. Loser does not pay. Limited loser pays (cases with more than 15 domain names).

www.WorldTrademarkReview.com December/January 2014 World Trademark Review 65 Feature: Exploring the URS

waters with this option; if it turns out that a significant proportion UDRP may be more appropriate as the URS is suitable only for clear- of once-suspended domain names end up back in the hands of cut cases of infringement. These include fair uses such as criticism, infringers, brand owners will quickly grow weary of the risk of URS and probably also grey-market goods and unauthorised distributors ‘whack-a-mole’ scenarios and instead opt for the UDRP. (eg, the OkiData line of UDRP cases).

Does the domain name correspond to a pending product launch? Does the domain name match your mark exactly? If the domain name relates to a pending product launch, it may be In cases where the domain name matches your mark exactly, that the URS is the preferred initial option, given that the domain there are less likely to be questions and possible defences raised, name will be suspended significantly quicker. From there, a decision meaning that the case may indeed be the kind of ‘slam-dunk’ can be made about whether to file a UDRP to secure the name more case contemplated by the URS. On the other hand, typos or added permanently – for example, if the brand owner wants to use the words may require an examiner to draw legal conclusions in domain name (which is not permitted under the URS suspension) or order to associate your mark with the disputed domain name; keep it down permanently. A URS complaint cannot be filed against a in some cases this might tip the scales away from the type of domain name that is part of an open and active URS or UDRP case, but obvious slam-dunk case contemplated by the URS (in nearly half there appears to be nothing to prevent a UDRP case from being filed of WIPO UDRP cases the domain name exactly matches the mark, after the conclusion of a URS case (a URS suspension may show clear with the remaining half more or less split between typos and bad faith for UDRP purposes); however, this will trigger additional fees. mark+plus variations).

Does the domain name correspond to a time-limited marketing Is the registrant using the domain name to infringe other IP rights? campaign? A growing number of UDRP cases involve allegations of other IP Where possible ongoing infringement may not be a concern (eg, a infringement such as copyright or, frequently, counterfeiting. six-month sweepstake or an annual sports league championship), Although such abuses may be particularly egregious or time the URS may be the preferred option. The domain name will be sensitive, URS examiners may find that such conduct – in suspended more quickly and, with the possibility of extending the particular where grey-market goods or unauthorised distributors suspension for a year, recurring registration fees can be avoided. Here are at issue – requires the more nuanced analysis allowed for again, though, it is important to remember that a URS-suspended under the UDRP. On the other hand, if the infringement is domain name cannot be used by anyone, including the trademark immediately obvious (eg, piracy or counterfeiting), it may be just owner. the type of slam-dunk case contemplated by the URS (in truly egregious cases of criminal activity, registry operators are required Can the registrant raise any legitimate defences? to have an abuse point of contact). If there are reasonable defences that favour the respondent, the With both the URS and UDRP, the possibility of amicable

Table 2. URS fees (of the two existing URS providers, only the NAF has officially announced its fees at time of press)

Fee type Paid by Amount Refundable/to whom?

Filing fee Complainant Number of domains Fee No 1-14 $375 15-50 $400 15+ domain names – 51-100 $450 loser pays 101+ $500 Response fee Respondent Number of domains Fee Yes – to prevailing party 15-50 $400 51-100 $450 +100 $500 Re-examination fee Respondent $200 No (30 days after response deadline) Re-examination extension Respondent $100 No fee Appeal Appellant Panellists Fee No (no new material 1 $300 submitted) 3 $950 Appeal Appellant Panel size Fee No (new material submitted) 1 $450 3 $1300 Appeal to UDRP Appellant (now the The NAF will credit half of the filing fee paid in a NAF-administered URS case to the complainant in UDRP) filing of a NAF-administered UDRP case for the same domain name(s), by the same complainant and between the same parties, if the appeal to the UDRP is filed within 30 calendar days.

See page 67 for a brief description of registry-specific rights protection mechanisms

66 World Trademark Review December/January 2014 www.WorldTrademarkReview.com settlement is always available (in which case the domain name could Registry-specific rights protection mechanisms be used by the trademark owner); in today’s UDRP terms, around 20% of cases settle. If you feel that your case is a candidate for settlement • Donuts Inc (307 applications): – for example, based on historical evidence of settlement by that • Domain Protected Marks List – blocks your mark(s) and registrant or the strong merits of the case – the URS may be your variants (not just exact match) across all Donuts TLDs; preferred route as the cheaper option. However, remember that in • Whois validation; and UDRP cases, WIPO will refund $1,000 of the $1,500 filing fee, so that • periodic data accuracy audits. if you settle, the total filing cost is only slightly higher than the URS • Google (44 ‘traditional’ applications): ($500 versus $375) – it may be worth the small additional filing fee • 60-day sunrise (ICANN mandates 30 days); and and case preparation burden to preserve your option to reclaim the • ongoing trademark claims service. domain name under the UDRP. • Uniregistry (54 applications): • a cost recovery sunrise block across each Uniregistry TLD, Additional considerations when using the URS and UDRP which also covers certain (as yet undefined) typo variations; When in doubt as to the strength of your case, the UDRP will be the and go-to choice. Aside from the (at least conceptually) lower burden • a ‘once and for all’ block which covers any future Uniregistry of proof, the UDRP allows for a more nuanced consideration of the TLDs. facts and circumstances of individual cases. For example, a case • ICM (three applications for ‘.sex’, ‘.porn’, ‘.adult’) – automatic involving alleged non-commercial free speech or pay-per-click ads block of any second-level name already registered in ‘.xxx’, covering grey-market goods may not be clear cut in the eyes of including sunrise B (defensive trademark-based registrations). a URS examiner, whereas a UDRP panellist can look at additional factors such as the full context of the alleged fair use, detailed licence arrangements and any wider allegations of counterfeiting. On the other hand, the UDRP will likely be preferred where: Given the monitoring burden created by a temporary URS • you are relying on common law or design marks; suspension (not to mention the appeals possibilities), trademark • you are dealing with ongoing or future harm to your brand or counsel may choose to adopt a calculated risk approach, testing the URS consumers; or suspension in a handful of cases, but opting for the UDRP if they perceive • the domain name could positively contribute to your domain a risk that the domain name may be picked up by infringers. If the few name portfolio. UDRP cases electing cancellation as the preferred remedy are anything to go by, testing the URS may be done on a cautious basis, at least for cost- ICANN has bookmarked a URS and UDRP review for 18 months conscious counsel or clients weary of potential repeat URS filings. after the delegation of the first new gTLDs. In the meantime, while On the other hand, brand owners – whose budgets are being – against the request of some IP representatives – the ICANN board stretched beyond recognition – cannot afford UDRP case after UDRP recently voted not to apply the URS to incumbent TLDs such as ‘.biz’ case. If infringing domain names are not re-registered, the URS will have or ‘.info’, the URS is presently being beta tested on ‘.pw’, the country- served its purpose well; however, if unscrupulous cybersquatters snap code TLD (ccTLD) for Palau; at the time of press, the NAF has posted up previously suspended names (imagine the horror of a drop-catching the first URS decision for ‘facebok.pw’. business model for URS cases), this strategy may be short lived. Once ICANN’s UDRP/URS review kicks off, while registrants Brian Winterfeldt, partner at Katten Muchin Rosenman LLP, stated: will lobby for longer timelines, stronger defences and complaint “The lower-cost URS may make sense as a go-to enforcement mechanism penalties, IP representatives are expected to push for a range of in many cases, especially when the value of recovering a domain name improvements, such as: and adding it to the organisation’s domain name portfolio may not • full loser pays – registrars have payment details on file and there be clear. Brand owners may wish to use the URS selectively once it is is precedent for this at least in the ccTLD spaces of ‘.no’ and ‘.be’; available in order to assess how it compares to the UDRP in the context • the option of a URS transfer or reserved names list remedy – the of their organisation’s overall enforcement strategy.” latter is already used in the ‘.au’ space; Brand owners which have applied for their own new gTLDs • application of the URS to ‘old’ TLDs; and already have a foot in the door to reducing the need for URS or • redesign of the URS to operate on a two-path default-driven basis, UDRP cases in the future, except in particularly sensitive cases. They where default cases would result in suspension and defended have taken a fork in the road and opted to strengthen their online cases would be decided by expert panellists with an appeals identities by creating their own domain; in future, their message board (ie, a merging of the existing URS and UDRP), as has been will be that if something does not end in ‘.Tiffany’, for example, it advocated by WIPO. is not an authentic Tiffany site. Even , operator of ‘.com’, applied for ‘.comsec’, seemingly a portmanteau of ‘com’ and ‘secure’ Until then, beyond market purchases and cease and desists, the as a new gTLD – what message does that send for the future of ‘.com’ URS and its big brother the UDRP are the key tools available to domain names? trademark counsel to help stem the tide of infringement in new gTLDs – giving parties around the world a relatively efficient Conclusion enforcement option outside the courts. WTR The URS, notwithstanding its imperfections, will be a useful enforcement option where: • you are relying on a well-known registered word mark; • you are looking for a quicker, cheaper result; or • the infringement may sunset and/or you have a reasonable risk tolerance for possible repeat infringement/case filings – budget Brian Beckham is head of legal policy at Valideus cycle considerations may also come into play here. [email protected] www.WorldTrademarkReview.com December/January 2014 World Trademark Review 67