The URS and the Form of Complaint

A while back I mentioned here that I wanted to post about the dispute resolution policies open for discussion in connection with the introduction of new TLDs. And as I also mentioned below, the comment period for the latest Draft Applicant Guidebook recently came to a close and those comments included many comments related to the various dispute resolution procedures in the fourth version of the DAG. My intent was to write posts about the URS, the Trademark Clearinghouse and both the PDDRP and the RRDRP, but I already have around 1,300 words devoted to the URS and I am only half way through the major issues. So, I plan on breaking this into chunks, starting with the URS. Over the next few days I will be posting about the format of the complaint, the timing inherent to the rules, the standard of review and the procedures for both default and appeal, but first I will discuss the format of the complaint, along with a little background on the URS for color.

The IRT recommended the inclusion of the URS to be a faster and less expensive option than the UDRP for trademark owners. The IRT asserts in its Final Report that “the UDRP has unquestionably been an important and successful mediation tool for trademark owners and domain name registrants alike.” Nevertheless, due to the fact that “brand owners face thousands of infringing websites per year,” those brand owners “spend large amounts of money to build up portfolios of domain names they do not want, simply to prevent fraud on their consumers and misuse of their brands.” The URS contains the same substantive elements of the UDRP, but “the URS is intended to address efficiently and cost-effectively the most clear cut cases of abuse,” and therefore the standard of proof is higher in the URS than the UDRP. Furthermore, the remedies available under the UDRP are either the transfer or the cancellation of the disputed domain name, while the remedy under the URS is only that the domain name is “frozen” for the remainder of the domain name’s registration period, leaving the domain name to resolve to a specific error page.

In light of the stated goal to keep costs associated with the filing of complaints under the URS down, the IRT proposed that the fees should be much lower than those fees associated with the UDRP, and more importantly that the form of complaint should consist of a standard form, complete with check boxes in connection with the various elements of the URS, along with the opportunity to provide a brief explanation with regard to the bad faith element of the policy. The form complaint contains simply the complainant’s contact and trademark registration information, along with the opportunity to insert the disputed domain names in correlation with the relevant trademarks. Check boxes were included in connection with the elements listed under the registrant’s rights to or legitimate interests in the disputed domain name, as well as the four UDRP factors related to bad faith registration and use. And a mandatory comment section is provided in the bad faith registration and use section. As opposed to the form complaint, the DAG proposal in volume four asserts that a complaint “will be simple and as formulaic as possible” and imposes a word-count limit of 5000 words, excluding attachments, which happens to be the same word limit for a UDRP complaint filed with WIPO in accordance with WIPO’s UDRP Supplemental Rules, as well as the word limit under ICANN’s proposed New gTLD Dispute Resolution Procedure, the PDDRP and the RRDRP.

While the reduced fees for the URS speak well for the cost savings for filing complaints, the word limit is of most importance because trademark owners faced with a domain name that infringes its trademark will either need to devote internal resources in the form of in-house counsel to prosecute complaints over domain names or pay legal fees in association with the use of outside counsel, and those fees or opportunity costs are often greater than the filing fees charged by the dispute resolution providers.

Pursuant to the public comment period subsequent to ICANN’s release of the DAG volume 4, a number of trademark owners and organizations representative of trademark owners complained that the latest draft of the URS was no longer as inexpensive as it was designed to be. Nick Wood, Managing Director at Com Laude, questioned the lengthiness of the URS complaint and asked, “who will afford to be a panelist? Will ICANN subsidise URS?” Frederick Felman, Chief Marketing Officer at MarkMonitor, contended that the URS “will not be inexpensive” and posited that “it is likely that the majority of brand holders will be forced to buy a domain name in each gTLD corresponding to their trademarks or will be filing requisite UDRPs as opposed to relying on the equally time consuming and costly URS process.”

Since the original intent of creating the URS was to create a faster and cheaper form of the UDRP, it appears unnecessary for the length of the complaint to be equivalent. Although some have argued that the higher standard of proof in the URS, clear and convincing evidence, rather than the preponderance of the evidence test in the UDRP, will require additional time and resources to prove, I don’t think that argument holds much water since the URS is only intended to provide relief in the “most clear cut cases of abuse.” Moreover, the nature of disputes in connection with the URS will be less complicated than those related to the UDRP, New gTLD DRP, the PDDRP and the RRDRP, and therefore the necessity of 5000 words appears lessened. And finally, in connection with the original intent of the URS to provide relief only in the “most clear-cut cases” of trademark abuse, the form complaint originally proposed by the IRT should be implemented or the word count should be greatly reduced to 1000 words, or approximately the length of this post, which should be more than sufficient to prove the clear cut cases for which the URS was intended to remedy.