The so-called “Response Fee” is only required in URS cases that include 15 or more disputed domain names. Specifically, paragraph 2.2 of the URS states:
Complaints listing fifteen (15) or more disputed domain names registered by the same registrant will be subject to a Response Fee which will be refundable to the prevailing party. Under no circumstances shall the Response Fee exceed the fee charged to the Complainant.
In my review of all 652 URS cases filed at the Forum as of this writing, only two cases with 15 or more domain names have resulted in determinations: One involving 16 domain names and the WHATSAPP trademark; the other involving 474 domain names and the ASHLEY FURNITURE trademark. (I wrote about the latter in an earlier blog post, “Here’s the Largest URS Complaint Ever Filed.”)
(The Forum is, by far, the leading URS provider. As of this writing, the Asian Domain Name Dispute Resolution Centre has received only 31 URS cases, and MFSD has received only 10 URS cases — none of which involve 15 or more domain names;.)
Both of these large URS cases were defaults, which indicates that the domain name registrant did not submit a response. Therefore, presumably, no Response Fee was submitted either.
The concept of a Response Fee does not appear in the more popular Uniform Domain Name Dispute Resolution Policy (UDRP), so it is difficult to draw many (or, perhaps, any) conclusions about the impact of this requirement from only two URS determinations.
Still, the additional fee is obviously an interesting way for a “prevailing party” to recoup some of its expenses — although, perplexingly, the URS does not define “prevailing party.” While it would seem logical that the prevailing party in a URS determination suspending all domain names would be the trademark owner complainant, and the prevailing party in a URS determination denying a suspension of all domain names would be the domain name registrant — what would happen in the event of a split determination? Would the fee be refunded to the parties proportionate to the number of domain names in dispute?
(While I’m not aware of any split determinations in URS cases, it arises occasionally in UDRP proceedings, so there is no reason why we won’t eventually see it happen in the URS system.)
In any event, it will be interesting to see when, if ever, a domain name registrant actually submits a Response Fee in a URS case. Because the URS provides (paragraph 220.127.116.11(b)) that “a pattern” of certain domain name registrations can demonstrate the required “bad faith” element of the URS, a registrant in a large URS proceeding might elect not to pay the Response Fee because it does not anticipate prevailing.
Finally, it is worth noting that the Response Fee is apparently only required if the domain name registrant submits a response — and that a domain name registrant can nevertheless prevail in a URS case even if it fails to submit a response (because the burden of proof on the complainant is “clear and convincing evidence”).
In that way, the URS is much like the UDRP: A trademark owner must, of course, pay a filing fee to obtain the possibility of a winning outcome, but a domain name registrant can do — and pay — nothing, yet still prevail.