FIGHT AGAINST CYBERSQUATTING : COMPARISON BETWEEN URS AND UDRP

AnticiperTo fight against cybersquatting, the UDRP procedure was first implemented more than 10 years ago to fight against these practices. It is an effective procedure. It has enabled more than 31,000 disputes to be handled since its inception in late 1999. Subsequently, and as part of the launch of the new gTLDs, ICANN created the URS procedure to supplement the UDRP procedure. This new simplified procedure is cost effective and provides a faster alternative to trademark owners. The question is what elements differ from both procedures?

 

UDRP URS
Domain names at issue gTLD, new gTLDs and some ccTLDs (can vary in terms of authorized centers) New gTLDs and some ccTLDs
Communication Electronic Electronic
Authorized centers to receive complaints 1) World Intellectual Property Organization (WIPO)

 

2) The National Arbitration Forum (NAF)

 

3) The Asian Domain Name Dispute Resolution Center (ADNDRC)

 

4) The Arab Center for Domain Name Dispute Resolution (ACDR)

 

5) The Czech Arbitral Court (CAC)

1) MFSD Center

 

2) The National Arbitration Forum (NAF)

 

3) The Asian Domain Name Dispute Resolution Center (ADNDRC).

Maximum number of words Complaint: 5000 words maximum

Response: 5000 words maximum

Complaint: 500 words maximum

Response: 2500 words maximum

Language Language of the registration contract (unless otherwise agreed or under specific circumstances) Complaint: English

Response: English, unless notified otherwise

Elements of the complaint 1) Identical or similar domain name that could be confused with the trademark.

2) No rights or legitimate interest in the domain name

3) The domain name was registered and used in bad faith

1) Identical or similar domain name that could be confused with a trademark in relation to which the applicant has a valid national or regional registration which is in use; or which has been validated through court proceedings; or which has specifically been protected by statute or a treaty in force at the time when the URS complaint was initiated

2) No rights or legitimate interest in the domain name

3) The domain name was registered and used in bad faith

Time limit to respond 20 calendar days 14 calendar days
Extension of time limit to respond At the defendant’s request or following an agreement between the parties

No express limitation period

At the defendant’s request

7 calendar days maximum

Standard of proof Preponderance of evidence Clear and convincing evidence

No actual question of fact must be raised

Rectification of irregularities Control by the arbitration center within 5 days of the filing of the complaint

5 calendar days to rectify the irregularity, else dismissal of the complaint

Control by the arbitration center within 2 days of the filing of the plaint

No possibility of rectifying an irregularity due to the speediness of the procedure

Time limit for decision Within 14 days of notification of the panel Within 5 working days from the filing of the complaint
Sanction Transfer or cancellation of the domain name Suspension during the registration period of the domain name

Possibility to extend the suspension for 1 additional year

Appeal No Yes
Panel 1 or 3 panel members 1 panel member for assessment and 1 or 3 for appeal

 

 

While the URS procedure has the advantage of speed and simplicity, the objective of the UDRP is the complete removal of the disorder. The choice between these two procedures will then take on the establishment of a strong and effective strategy, in line with the real value of the domain name to the trademark owner and the objective to achieve.

Dreyfus proposes to assist you with any URS or UDRP and worldwide considering the best strategy for recovery and protection of your rights.