The Internet Corporation for Assigned Names and Numbers (ICANN) has the responsibility for administration of domain names. ICANN developed a program for the expansion of new generic top level domain names (gTLDs) beyond the standard .com, .org, .net, .edu and .biz. Hundreds of new gTLDs have now been delegated and are available for registration. For example: .finance, .insurance, .fitness, .nyc, .trade, .pub, .software, .clothing, etc.

Within hours of the first new gTLDs being launched, cyber squatters proceeded to register domains consisting of brand owners trademarks with the new gTLDs, such as "Tommyhilfiger.clothing" and "Carters.clothing." This has become a growing problem for brand owners, and enforcement of their trademark rights can be very expensive.

In association with the launch, ICANN developed the Uniform Rapid Suspension (URS) as a protection mechanism for trademark owners. The URS is intended to deal with clear-cut trademark infringement cases and is offered at a lower cost than other rights protection mechanisms available.

PROS

CONS
  • $375 filing fee (1-14 domains).
  • 2 URS providers only (National Arbitration Forum and Asian Domain Name Dispute Resolution Centre).
  • Electronic complaints, 2-day review, "lock" put on domain within 24 hours.
  • The "lock" prevents the registrant from making any changes to registration data.
  • Registrant has 14 days to file a response.
  • Decision must be rendered no later than 5 business days after the response is filed.
  • If favorable, a suspension of infringing domain name.
  • All fees are non-refundable.
  • Given rapid nature of this procedure, there is no opportunity to correct inadequacies in the filing requirements.
  • A successful URS Complaint cannot obtain a cancellation or transfer of the domain name.
  • Only suspension.

While the URS may not work for all domain disputes (e.g., where the brand owner needs a transfer of the domain into its own portfolio), there are many obvious benefits. These benefits include cost-savings and the expedited nature of the review. If you have any questions about how to take advantage of the URS procedure or other available domain name dispute procedures, please contact Venable.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.