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New Tool to Combat Cybersquatting Ready For Implementation




by:
Crowell Moring LLP - Washington Office

 
April 3, 2013

Previously published on March 28, 2013

With the introduction of new gTLDs, ICANN will introduce new mandatory rights protections mechanisms. Among these mechanisms is the Uniform Rapid Suspension system (URS), which for a long time was considered to be a blocking factor to the introduction of new gTLDs. ICANN has now found a dispute resolution provider who is willing to offer URS services at the targeted pricing and finalized the rules governing the URS.

Background

The Uniform Rapid Suspension system (‘URS') is a rights protection mechanism developed by ICANN to be implemented within new gTLDs that facilitates "rapid" suspension of domain names in clear-cut cases of trademark infringement. As ICANN has described the URS, It is intended to complement the existing Uniform Domain-Name Dispute Resolution Policy (UDRP) by offering a lower-cost, faster path to resolution for mark holders.

For a long period of time, the implementation of the URS was seen as a blocking factor to ICANN's new gTLD program as it seemed that the cost of the URS procedure as written would exceed targets. In September 2012, ICANN issued a Request for Information to find a candidate who would meet the requirements for providing URS services at the targeted cost.

ICANN Finds Dispute Resolution Provider and Finalizes the URS Procedure

On 20 February 2012, ICANN announced that it has appointed the National Arbitration Forum as the first of multiple providers that will be appointed to administer URS services. The process for appointing additional providers will be similar to that of appointing UDRP providers in which consideration is given to achieving competitive provisioning and geographical spread of providers.

Shortly after this announcement, on 5 March 2013, ICANN published a new version of the URS Procedure, a policy document updating the draft version of the policy that was posted in ICANN's June 2012 Applicant Guidebook. ICANN also published a set of Rules for the URS Procedure, similar to the Uniform Domain Name Dispute Resolution Policy (UDRP) rules. In addition to these Rules, each URS service provider is expected to produce supplemental rules to help standardize conduct for the prosecution of claims between complainants and respondents. Such supplemental rules must be in line with and may not contradict the URS procedure or the Rules.

With this updated version, the URS Procedure document nowappears final.

In comparison with ICANN's previous draft, two changes are particularly relevant:

  • A respondent, whether in default or not, will have 14 days from the date the decision (called Determination) is issued in order to file an appeal. In the previous version of the Procedure, a defaulting respondent was still able to seek relief from Default by filing a Response within 6 months of issuance of the initial Determination. This possibility is now excluded.

  • A respondent shall pay a Response Fee if the Complaint lists 15 or more disputed domain names registered by the same registrant, instead of 26 or more according to the previous version of the Procedure.

Other changes to the Procedure appear largely cosmetic in nature.

The updated URS procedure contains no explicit reference to the approximate fee for URS proceedings anymore. The fee will need to be determined by the URS service providers. The Memorandum of Understanding between the NAF and ICANN provides that URS services will be provided on a reasonable and cost effective basis. The fee is expected to be between 300 and 500 USD.

Conclusion

The appointment of a service provider for the URS and the changes to the URS procedure are good news for trademark holders who wish to act rapidly against clear-cut trademark abuse in new gTLDs. Particularly in cases involving a high number of domain names, the URS may prove to be efficient in combating cybersquatters.



 

The views expressed in this document are solely the views of the author and not Martindale-Hubbell. This document is intended for informational purposes only and is not legal advice or a substitute for consultation with a licensed legal professional in a particular case or circumstance.
 

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