URS and Standard of Review

In connection with previous posts parsing through the URS, today’s post covers the evolution of the standard of review from the IRT’s proposal to the proposed standard of review in the DAG volume 4. Pursuant to the IRT’s final report, the standard of review for decisions under the URS consists of a single paragraph:

“If the Examiner finds that all of these elements are satisfied by clear and convincing evidence and that there is no genuine contestable issue, then the Examiner shall issue a decision in favor of the Complainant. If the Examiner finds that the test is not met, then the Examiner shall deny the relief requested terminating the URS process without prejudice to the ability of the Complainant to proceed with an action in court or under the UDRP.”

The “Examination Standards and Burden of Proof” contained in volume four of the DAG, on the other hand, is over a page long, single spaced. The DAG includes the language recommended by the IRT, but also adds the page-long “Standard of Review” proposed by the recommendations of the STI, none of which appears to add anything to or extend beyond the simple clear and convincing evidence test proposed by the IRT.

For example, the DAG proposal reads, “For a URS matter to conclude in favor of the Complainant, the Examiner shall render a Determination that there is no genuine issue of material fact. Such Determination may include that: (a) the Complainant has rights to the name; and (b) the Registrant has no rights or legitimate interest in the name. Of course, outside of the use of the permissible “may,” (b) does not add anything to the URS, as that is one of the three elements cobbled from the UDRP to include in the URS. And (a) is irrelevant. Neither the URS nor the UDRP has ever been used to determine whether the Complainant has rights to the disputed domain name. The URS and the UDRP are designed to provide a remedy for trademark holders against the bad faith registration and use of domain names identical or confusingly similar to marks in which the trademark holder has rights. The issue is not and never has been whether a trademark holder has rights to a domain name registered to a third party.

Furthermore, the DAG proposal states, “If the Examiner finds that the Complainant has not met its burden, or that genuine issues of material fact remain in regards to [sic] any of the elements, the Examiner will reject the Complaint under the relief available under the URS. That is, the URS Complaint shall be dismissed if the Examiner finds that: (1) evidence was presented to indicate that the use of the domain name in question is a non-infringing use or fair use of the trademark; or (2) under the circumstances, and no Response was submitted, a defense would have been possible to show that the use of the domain name in question is a non-infringing use or fair use of the trademark.”

Again, I do not see how (1) adds anything to the URS, as the “fair use” language is included in the Registrant Defenses section of the Policy. Moreover, the “a defense would have been possible” language is so vague as to be meaningless. And whatever it means, it does not appear to add significantly to the clear and convincing evidence test initially recommended by the IRT. The language in the DAG was pulled from the recommendations GNSO’s Special Trademark Issues Review Team, who appear to be seeking broader protections for domain name registrants, and domain name registrants should be protected from overreaching URS complaints. It just is not clear how this convoluted language provides stronger protection than the original clear and convincing test proposed by the IRT.

The IRT’s proposal for the URS included a strong standard of review: clear and convincing evidence. The strong test was necessary because the URS is only intended for clear cut cases of trademark abuse. The superfluous language added to that test just causes confusion and should be removed from the final draft of the DAG.