The suspension remedy is often viewed as the greatest limitation of the URS. Trademark owners that want to have a domain name transferred typically file a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) instead of the URS — but, the UDRP is more expensive and time-consuming.
Still, in some cases, trademark owners have been able to obtain the transfer of a domain name as the result of a URS proceeding. While the URS itself doesn’t provide for a transfer remedy, the issue can arise if a trademark owner and domain name registrant agree to a transfer after a URS complaint has been filed but before a determination has been issued.
In other words, a settlement under the URS can result in the transfer of a disputed domain name.
Settlements under the UDRP are not uncommon, but doing so under the URS is much more unusual and challenging, largely because of the expedited nature of URS proceedings.
While URS case files are not made public, it’s interesting to note that a number of URS complaints have been withdrawn and the disputed domain names are now registered by obvious trademark owners — a likely indication that the parties settled their disputes.
Indeed, at the Forum (the largest provider of URS services), 37 of 685 complaints — about 5.4% — have been withdrawn. In two cases withdrawn earlier this year, for <interbrand.design> and <astonmartin.forsale>, the current registrants are, respectively, Interbrand Group and Aston Martin Lagonda, which own the respective trademarks.
A trademark owner that wants to use the URS to encourage a transfer needs to act quickly, given that URS proceedings typically result in a determination within about three weeks of filing a complaint.
The URS rules anticipate the possibility of a settlement between the parties. Rule 16 of the URS states: “If, before the Examiner’s Determination, the Parties agree on a settlement, the Examiner shall terminate the URS proceeding.” And the Forum’s Supplemental Rule 7 outlines a process where the parties can request a one-time stay of up to 45 days — a pause in the URS proceeding that the parties can use to negotiate or perhaps even implement a settlement such as a transfer of the disputed domain name.
Of course, if a trademark owner can obtain the transfer of a disputed domain name as the result of filing a URS complaint, then it likely will have done so less expensively and more quickly than if it had filed a UDRP complaint.
But, given the relatively low number of URS proceedings that have been withdrawn (and not all withdrawals have been accompanied by transfers), the URS is primarily most effective only for its intended purpose, that is, domain name suspensions. Still, a URS-related transfer is an intriguing exception to the rule.