Tuesday, December 28, 2010

ICANN’s Proposed Final Applicant Guidebook and the URS

I love blogs. More specifically, I love blogs that are frequently updated and well written. This blog is not where I would like it to be since I have not been posting here regularly. Whether the content is any good is not for me to decide, but I would like to write here more frequently. Alas, perhaps my blogging in 2011 will be more fruitful.

As I mentioned in my previous post, ICANN released the latest version of the DAG and is referring to it as the Final Applicant Guidebook. The public comment period was extended to January 15th at the last meeting in Cartagena. There are comparatively fewer changes to this version than previous DAGs and for purposes of clarity I will cover those in the same order of the original posts on this blog, starting with the URS. As you may recall, previous posts discussed the form of the complaint, the time line, the standard of review, and default and appeal.

Form of Complaint

As I discussed before, the IRT originally proposed a form URS complaint consisting of check boxes and limited space for comments and this aspect of the URS was rejected by the STI. The DAG subsequently instituted a 5000 word limit, excluding attachments, for the complaint and this remains the same in the Final AGB. I argued before that, if a simple check box form is not sufficient for some (eBay’s VeRO Program with its NOCI form could have been an example to follow.), then the word limit for a URS complaint should be reduced to save on legal costs, whether external or internal to the trademark holder, particularly since the URS is specifically intended to remedy clear cut cases of trademark abuse. If the difference in costs to the trademark owner is simply the difference in the filing fees between the UDRP and the URS, trademark owners may very well decide to file complaints under the UDRP instead of the URS, since the UDRP provides transfer or cancellation of the domain name, rather than suspension of the disputed domain.

Moreover, the fees associated with filing a complaint under the URS is suggested by ICANN to be $300 or about $1000 less than a filing under the UDRP for a complaint concerning one domain name. The $300 fee will likely be divided between the URS Provider and the Examiner in some proportion, but the fee structure does not leave much for either. How will a URS Provider process a sufficient volume of complaints to justify handling of such disputes? And how will the Examiners, who are supposed to have “legal background” and “trained and certified in URS proceedings,” supposed to make a determination on a lengthy complaint and, potentially, a lengthy response for something less than $300? Paragraph 7.3 of the Final AGB discusses the rotation of Examiners to discourage forum shopping, but I wonder how many forums will be interested in administering the URS under the rules as currently stated in the Final AGB.

Time Line

The Final AGB reduces the response period under the URS from 20 days to 14 days, which was the original recommendation from the IRT. As I suggested in my post in connection with the time line below, the result is a process that should take only 23 days. The URS Provider has three days upon receipt of the complaint to conduct an administrative review and then the URS Provider must notify the registry within 24 hours from the time the complaint is deemed compliant. The registry then has 24 hours to “lock” the domain name and notify the URS Provider of the locking of the domain name. The URS Provider then has 24 hours to notify the registrant of the complaint, a time line of six days. Next the registrant has 14 days from the notice of complaint to file a response. Upon conclusion of the response period or, alternatively, the receipt of a response, the URS Provider has a “stated goal” of three business days to issue a determination of the dispute, for a grand total of 23 days. The Final AGB provides for a “limited extension of time to respond … if there is a good faith basis for doing so” to be determined by the URS Provider, but, in any event, no more than seven calendar days. Furthermore, the URS Provider may issue a decision in the dispute in 14 days, rather than the “stated goal” of three business days, but no longer “[a]bsent extraordinary circumstances.” Should a URS dispute arise in which the registrant was granted a seven-day extension and the Examiner required the full 14 days to issue a decision, the total would then be 41 days from the filing of the complaint to the issuance of the decision.

Standard of Review

The standard of review remains largely unchanged with only the deletion of a reference to the fact that the standard is higher under than the URS than the UDRP, because the URS is only intended for “the most clear cut blatant case of infringing conduct.”

Default and Appeal

The rules for default and appeal under the URS also remain largely unchanged, although the time limits have been reduced from 20 days to 14 days.


Since the ICANN Board has signaled that the trademark protection issues for the expansion of new top-level domains have been resolved, it is likely this form of the URS will be one of the tools for trademark owners to use to protect their rights. I maintain that the biggest issue for trademark owners will be the internal or external costs that will be required to devote to a lengthy URS complaint. Will trademark owners and their representatives use this new dispute resolution policy or will the limited cost savings in filing fees persuade them to stick with the UDRP? And will the minimal filing fees dissuade entities from applying to become URS providers and/or qualified applicants from becoming URS Examiners? We shall see.