In the largest URS case ever filed, an expert at the Forum ordered the suspension of 474 domain names in a single proceeding. The URS complaint was filed by Ashley Furniture Industries, Inc. (“Ashley Furniture”), against Fahri Hadikusuma. Ashley Furniture, which describes itself as the largest home furniture retailer and manufacturer in the United States and the largest manufacturer of furniture in the world, has been an active filer of UDRP complaints, but this URS case apparently was its first. And, obviously, it was a big one.
Ashley Furniture’s largest domain name dispute before the huge URS case seems to have been a 2015 UDRP case with 13 domain names, although most of its cases involved only a single domain name. It appears as if Ashley Furniture won almost all of those cases — about 120 decisions since 2008, making the company one of the more active files of UDRP complaints. (One notable loss: It failed to obtain the domain name <ashley.com>)
As I have written before, the UDRP clearly allows multiple domain names in a single case. (Indeed, I filed the largest UDRP complaint ever, for 1,529 domain names, in 2009.) And, although the URS allows the same, the Ashley Furniture case seems to be the first large URS proceeding.
(As a reminder, the URS is the new domain name dispute policy that applies to the so-called “new gTLDs” and allows a trademark owner to get a domain name suspended, but not transferred. On the other hand, the UDRP is the longstanding domain name dispute policy that applies to new gTLDs as well as so-called “legacy gTLDs” such as .com and allows a trademark owner to get a domain name transferred. See “Differences Between the UDRP and the URS.”)
Specifically, Rule 3(c) of the URS says:
The Complaint may relate to more than one domain name, provided that the domain names are registered by the same domain-name holder.
This is identical to Rule 3(c) of the UDRP.
As with the UDRP, there are obvious benefits for a trademark owner to include multiple domain names in a single URS complaint. Among other things, a trademark owner can leverage the same arguments and filing, get multiple domain names suspended simultaneously and do so for a filing-fee-per-domain name that is less than pursuing each one individually.
Interestingly, the Forum (the largest provider of URS services), has a fee schedule that specifies a filing fee of $375 for a URS complaint containing 1-14 domain names; while the upper end of the schedule, for “51+” domain names, says: “Please contact the Forum for a fee quote.” Similarly, at the Asian Domain Name Dispute Resolution Centre, the URS fee schedule stops at 29 domain names, with larger filings “[t]o be determined by the Relevant Office of ADNDRC.”
(Note: The preceding paragraph has been edited to update the Forum’s filing fee schedule, which appears to have been amended. An earlier version of this blog post stated: “Interestingly, the Forum (the largest provider of URS services), has a fee schedule that specifies a filing fee of $375 for a URS complaint containing 1-14 domain names; while the upper end of the schedule maxes out at $500 for ‘101+’ domain names.”)
Despite the efficiency of a large URS filing, the Ashley Furniture case seems to contain one caveat for trademark owners: Getting a determination in a big case may take longer. The Rules state: “A Determination shall be rendered on an expedited basis, with the stated goal that it be rendered within three (3) Business Days from when Examination began. Absent extraordinary circumstances, however, Determinations must be issued no later than five (5) days after the Response is filed.”
Presumably, the Ashley Furniture case was extraordinary because, although the determination does not indicate when “Examination began,” it appears as if the determination was not issued for 23 days after the complaint was filed, which is longer than typical. Indeed, many URS cases that were commenced after the Ashley Furniture case resulted in determinations that were published earlier.
Other than that delay, there’s not much to be learned about the URS from the Ashley Furniture case, because the determination is — as is true with most URS determinations — short on substantive discussion. The determination’s only discussion of the issue of multiple domain names in a single URS proceeding is a brief reference to the fact that (as is also true in UDRP cases), the registration of so many relevant domain names by a single registrant may support a finding of bad faith: “[G]iven the number of disputed domain names, Examiner finds that Respondent has engaged in a pattern of domain name registrations in order to prevent the Complainant from reflecting its mark in corresponding domain names.”
Also, the determination contains a brief discussion on the issue of multiple respondents in a single proceeding, given that “some of the disputed domain names were transferred to a privacy service” after Ashley Furniture sent cease and desist letters to the registrant but before the URS complaint was filed.
Only time will tell whether the 474-domain name Ashley Furniture case is an outlier or whether it will be the start of a trend for larger URS filings.