A Short Review of URS Recommendations and Proposed Changes

Jun 12, 2024, 11:01 AM

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The Uniform Rapid Suspension System (URS) is a rights protection mechanism intended for the most clear-cut cases of cybersquatting. The scope is even narrower than the already-narrow focus of the Uniform Domain Name Dispute Resolution Policy (UDRP). Although the UDRP and URS have similarities, there are key differences:

1. Evidence of cybersquatting under the URS must be ‘clear and convincing’, which is a higher threshold than the UDRP;
2. The only remedy under the URS is suspension, whereas the UDRP can result in the transfer or cancellation of a domain name;
3. URS cases are processed far quicker than those under the UDRP.

None of those core aspects of the URS (speed, high threshold, and limited remedy) are under threat of changing. However, ICANN is considering several recommendations for the URS as part of their process in reviewing all rights protection mechanisms.

FORUM, a prominent URS provider, succinctly listed the recommendations under consideration earlier this year¹. In our opinion, the key potential changes stemming from the recommendations are:

1. Amended complaints for disclosed registrant data, similar to the UDRP;
2. Language of proceedings being determined in a manner similar to the UDRP;
3. Educational materials on the ‘clear and convincing’ standard, and more rationale given for decisions.

Those recommendations, if implemented, would make the URS slightly more resemble the UDRP.

Currently, cases under the URS are brought against the registrant as listed on Whois records. This is often a privacy service rather than the genuine underlying registrant. There is currently no provision for data disclosure.

Under the UDRP, complainants receive registrant data, and are given the opportunity to amend their complaints. On occasion, disclosure of a registrant’s name and details can significantly change the outlook of a case. Changing the URS rules to follow a UDRP-style approach to registrant data would therefore be a significant development.

Regarding the language of proceedings, this would be determined, as standard, on the language of the registration agreement. This standard may be deviated from if agreed by the parties, or by the URS Examiner assigned to the case. Currently, complaints are submitted in English by default. This proposed change could force complainants to translate their submissions to another language.

Both changes could increase the likelihood of respondent participation in URS proceedings. This ultimately makes the URS procedurally fairer. However, it is important to highlight that respondents have 2,500 words at their disposal, whereas complainants are limited to 500 words. Couple this with the expedited factual review, and the already high burden placed on the complainant, we could see more URS denials based on the respondent’s ability to introduce just enough uncertainty as to prevail.

An example of this is the Netflix URS case in 2015, where the respondent argued that it intended to create a fan site on netflix.news. According to the decision, no evidence was provided by the respondent other than its ‘self-serving statement’ (Examiner’s own description). Nevertheless, the respondent’s statement, in itself, was deemed sufficient to cause the complaint to fail under the URS.

Meanwhile, educational materials and more detailed Examiner decisions could help create a clearer standard for complainants. There have been some decisions under the URS which did not provide any explanation for their findings, whereas some provide useful insight into issues such as passive holding (non-use of a domain name). The T. Rowe Price URS case in 2022, for example, suggests that the UDRP’s Telstra test should also be applied under the URS. On the other hand, a reading of other Examiner decisions would suggest that non-use plainly cannot amount to ‘bad faith use’ under the URS due to its ‘clear and convincing’ standard.

Educational materials would also help when dealing with trademark technicalities. Reading the list of denied URS cases, one sees several distinctive and well-known complainants unsuccessfully using the URS for relatively obvious infringements. In cases such as NordVPN and Warner Bros Discovery, the denials were solely due to discrepancies between the trademark holder’s details and those of the entity which filed the URS case. Again, elements which would be easier explained in a UDRP are far more difficult when limited to just 500 words.

All in all, while the potential changes to the URS are not of a substantive nature, it will be interesting to see if they affect the quantity of case filings, and their denial rate. Currently, the URS is an often overlooked tool for brand owners to fight the most blatant of cybersquatting activity. If proposed changes create more certainty and bring it more procedurally in-line with the familiar UDRP, then we could see an uptick in its use.

¹https://www.linkedin.com/pulse/domain-name-disputes-changes-urs-procedures-coming-forum-adr-ncpcf