Tuesday, August 17, 2010

URS Conclusions: Form of Complaint and Standard of Review

Over the last two weeks, I have discussed the URS in connection with the original proposal of the IRT and the most-recent proposal in the DAG volume four. I have posted separately in relation to the form of the complaint, the time line, the standard of review, and the issues of default and appeal. I intend to combine these postings in the form of a white paper to be available to trademark owners or others interested in such issues that may be used as reference related to ICANN’s September Board retreat and the next public meeting in Cartagena, Colombia in December, where we may very well see a final DAG.

Are the issues with the URS outlined above worthy of nearly 3000 words and counting? Arguably not. But the major concerns for trademark owners are in connection with the scale of the implementation of new TLDs, as in potentially hundreds of new strings, each one of which could pose multiple concerns for trademark owners, who are required by law to enforce said rights or risk losing them. These concerns directly conflict with those who simply want new TLDs to move forward to some form of time line. It’s clear to me that those on both sides of this issue have worked hard to find common ground and the URS reflects those efforts on both sides.

While it does not appear that the URS time line, or the process of default and appeal differ significantly in the latest DAG from those proposed by the IRT, the form of the complaint and the standard of review still require amendment. With regard to the form of the complaint, the STI unanimously rejected the use of a standard form with check boxes. But the current 5,000-word limit leaves little reason for trademark owners to use the URS rather than the UDRP, with an equivalent word count and a stronger remedy. If check boxes are a none-starter, for whatever reason, the word count limit needs to be significantly reduced to encourage trademark owners to choose the URS over the UDRP. Since the URS is only intended as a remedy for clear cut cases of trademark abuse, a 1,000 word limit should prove sufficient to prove such a case, and alleviate the internal and/or external costs to trademark owners.

Similarly, the standard of review should be returned to the clear and convincing evidence test as proposed by the IRT. The language added to the IRT does not add anything to the strong test supported by the IRT and, in fact, adds language that does not fit with the stated goals of the URS or the UDRP. Further, the “defense would have been possible” language is so vague as to be meaningless. Domain name registrants should be protected from unscrupulous URS complaint, but the URS is only intended for clear cut cases and the known and understood clear and convincing evidence test properly fits such cases.

That’s it for the URS. If you would like a copy in the form of a white paper, feel free to e-mail me at Ryan@KaatzLaw.com for a PDF copy. The newest posts over the next couple weeks will be related to the Trademark Clearinghouse and both the PDDRP and the RRDRP.

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