Does the URS procedure benefit trademark owners? The situation two years later after its implementation
Since its creation and according to the report on the protection mechanisms of ICANN, updated in September 2015, over 300 URS proceedings have already been initiated. Most of the complaints are filed during the first months when the domain name is created. 68% of the decisions rendered were due to a lack of response from the domain name holder after formal notice was served. 94% of the decisions rendered have resulted in the suspension of the domain names involved. The speediness and reduced cost boasted by the URS procedure thus appears to be appealing.
However, the choice between URS and UDRP should not be merely limited to an assessment of these elements. Everything will depend on the facts and circumstances of each case and on the results that trademark holders wish to obtain. Is the domain name genuinely of value to them? What are the commercial stakes? Do they wish to merely block the domain name? To cancel it? To transfer it? If trademark owners opt for the URS procedure, they can only secure a temporary suspension of the domain name. But, if it turns out later that the domain name was of value to them, they will have to wait until it falls back into the public domain to be able to register it, all the while hoping that a third party does not do so before them. And while it is still possible to backorder (offer proposed by some registrars to register a domain name as soon as it falls back in the public domain), the results are not guaranteed and therefore, the URS procedure is no substitute for the UDRP procedure which allows domain names to be transferred. Therefore, if trademark owners wish to use the domain name, they will have to resort to the UDRP procedure. Other factors are also to be taken into account.
Does the trademark owner meet all of the requirements of the URS system? It is interesting, in choosing between the URS and UDRP procedures, to analyze the reasons behind the dismissal of some complaints. Thus, in a decision dated April 10, 2014, the NAF dismissed the complainant’s claim on the ground that the latter was not able to prove ownership of the trademarks which it claimed to own. Indeed, the expert held that the company which was the trademark holder was not the applicant company and that no link was established between the two.[i] Similarly, a complaint was dismissed due to the inability of the complainant to demonstrate the absence of legitimate interest and the bad faith of the domain name holder. In that case, it was not established that the domain name used was associated with the trademark since the website page did not include any reference to the said trademark.[ii]
It is also to be noted that the URS procedure offers no possibility of correcting irregularities. In such cases, the complaint is simply dismissed. Complainants must, therefore, be particularly attentive to details when drafting their complaints. Thus, in a case dated April 12, 2014, Wolfram Research, Inc. invoked the rights held by Wolfram Group, LLC against the domain name < wolfram.ceo>. The complaint was dismissed due to the fact that no link was established between the two companies.[iii] Three days later, Wolfram Group, LLC rectified its mistake by filing a new URS complaint, leading to the suspension of the domain name at stake.[iv]
The choice of the URS system must really be a strategical one. Under this procedure, the infringement must be manifest and the evidence of that infringement must be clear and convincing. For example, a URS proceeding initiated in June 2014 led to the domain name <stuartweitzman.email> being blocked.[v] Yet, on appeal, the experts considered that the condition which was previously satisfied and according to which the domain name holder should not have had any interest in the domain name, was no longer fulfilled following the filing of additional evidence. There is no safe bet as concerns the outcome of a URS proceeding. Indeed, the holder of the domain name <stuartweitzman.email> had also registered the domain name <lufthansa.email>. Despite the similitude in the facts, the examiners upheld, on appeal, the suspension of the domain name.[vi] It is equally very interesting to note that, in the case of the domain name <stuartweitzman.email>, following the URS proceedings which was lost on appeal, UDRP proceedings initiated in November 2014 led to the transfer of the domain name.[vii] The choice of out-of-court proceedings is therefore not an obvious one and the implementation of a strategy is essential to ensure an effective defense of trademarks.
To make it more difficult to choose between the URS and the UDRP procedures, trademark holders must also take into consideration the domain name itself. The URS procedure will constitute a real challenge for generic or descriptive domain names. It will be more complicated for applicants to demonstrate a lack of legitimate interest on the part of defendants, the more so since complaints will be limited to 500 words in terms of arguments. In contrast, it will be easier for defendants to prove this legitimate interest by the very nature of the domain name. In addition, trademark owners will have to assess whether the risk of re-registration of the domain name by third parties is low or high. In the event of a URS procedure, the blocked domain will fall back into the public domain. Depending on the domain name, trademark owners may thus potentially expose themselves to the risk of cybersquatting.
Due consideration must therefore be given to all of these elements and issues when deciding between the UDRP and URS procedures, the latter procedure producing positive effects only in very specific circumstances. Nevertheless, and irrespective of the outcome of an out-of-court URS or UDRP procedure, it will still be possible for parties to initiate proceedings before a national court.
Dreyfus & associates proposes to assist you with any URS or UDRP and worldwide considering the best strategy for recovery and protection of your rights.
[i] NAF, April 10, 2014, case n° 1550933, Aeropostale procurement Company, Inc c/ Michael Kinsey et a.
[ii] NAF, March 20, 2014, case n° 1545807, Virgin Entreprises Limited c/ Lawrence Fain
[iii] NAF, April 12, 2014, case n° 1553139, Wolfram Research, Inc. v. Andrew Davis et al.
[iv] NAF, April 30, 2014, case n° 1554143, Wolfram Group LLC v. Andrew Davis et al.
[v] NAF, June 24, 2014, case n° 1554808, Stuart Weitzman IP, LLC v. yoyo.email et al.
[vi] NAF, April 28, 2014, case n° 1552833, Deutsche Lufthansa AG v. yoyo.email et al
[vii] WIPO, November 6, 2014, case n° D2014-1537, Stuart Weitzman IP, LLC v. Giovanni Laporta , Yoyo.Email Ltd