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Insights and analysis about domain names and other Internet legal issues – by Doug Isenberg

How Long Does a URS Case Take?

How Long Does a URS Case Take?

The Uniform Rapid Suspension System (URS) — which allows a trademark owner to suspend certain domain names, especially those in the “new” gTLDs — was designed as a quicker and less-expensive alternative to the Uniform Domain Name Dispute Resolution Policy (UDRP). As I’ve written frequently before, there are significant differences between the URS and the UDRP. One of those differences is how long a typical proceeding lasts. Like the UDRP, the URS procedure and rules provide strict timelines for various stages of a case. But, unlike the UDRP, URS cases are usually resolved much more quickly — often in... read more

How Long Does a UDRP Case Take?

The Uniform Domain Name Dispute Resolution Policy (UDRP) was designed as a quicker and less-expensive alternative to litigation. Although the UDRP policy and rules provide strict timelines for various stages of a UDRP case, how quickly a dispute is actually resolved can vary based on numerous factors. A typical UDRP case results in a decision in about two months, but the facts of each case — including actions both within and outside the control of the parties — may shorten or extend that timing. Here’s how a common UDRP case proceeds: Step 1 (Filing of Complaint): A trademark owner has... read more

Early Disclosure of UDRP Complaints

Under the previous rules for the Uniform Domain Name Dispute Resolution Policy (UDRP), domain name registrants that had a complaint filed against them were supposed to be notified of the complaint by the trademark owner that filed it. Then, a revised set of UDRP rules that went into effect in 2015 eliminated the complainant’s obligation to notify the respondent. Instead, the new rules only require the UDRP service provider (such as WIPO or the Forum) notify the respondent, presumably after the registrar has locked the domain name, preventing any transfers. This rule change was designed to combat cyberflight,... read more

Bad Faith and the Essential Importance of Dates Under the UDRP

Two decisions under the Uniform Domain Name Dispute Resolution Policy (UDRP) provide an important (but obviously sometimes forgotten) reminder about the need to compare the date on which a complainant obtained its relevant trademark rights with the date on which a respondent obtained its disputed domain name. The comparison is often vital to the issue of “bad faith,” the third of the UDRP’s three-part test. That element requires a trademark owner to convince the panel that the disputed domain name “has been registered and is being used in bad faith.” In general, UDRP panels require that the complainant’s trademark rights... read more

When Two Trademarks Aren’t Confusingly Similar to One Trademark

As I’ve written before, domain name disputes involving multiple trademarks sometimes raise interesting issues, including whether a panel can order a domain name transferred to one entity without consent of the other. While panels typically have found ways to resolve this issue, one particularly troubling fact pattern arises when a panel denies a complaint simply because a disputed domain name contains trademarks owned by two different entities. The situation presents itself when a panel considers whether a domain name containing two trademarks is “identical or confusingly similar” to a single trademark — that is, the trademark owned by the complainant... read more

Thoughts About the Proposed Copyright Alternative Dispute Resolution Policy

A proposal from the Domain Name Association (DNA) would provide copyright owners with a new tool to fight online infringement — but the idea is, like other efforts to protect intellectual property rights on the Internet, proving controversial. The proposed Copyright Alternative Dispute Resolution Policy is one of four parts of the DNA’s “Healthy Domains Initiative” (HDI). It is designed to: construct a voluntary framework for copyright infringement disputes, so copyright holders could use a more efficient and cost-effective system for clear cases of copyright abuse other than going to court and registries and registrars are not forced to... read more

How to Suspend a .us Domain Name

Although rarely used, the usTLD Rapid Suspension Dispute Policy (usRS) allows a trademark owner to seek the suspension of a domain name in the .us country-code top-level domain (ccTLD). The usRS has many things in common with the Uniform Rapid Suspension System (URS), which applies to domain names in the new generic top-level domains (gTLD). Among other things: Both policies are administered by the Forum. Both policies have filing fees that start at only $375. Both policies have strict, 500-word limits on complaints. Both policies have awkward mechanisms for addressing defaults and appealing decisions. Both policies require a... read more

When a ‘Response Fee’ is Required in a URS Case

Although filing fees in domain name disputes are usually paid for by the trademark owner that files a complaint, the Uniform Rapid Suspension System (URS) contains a little-noticed provision that, in large cases, requires the domain name registrant to pay a fee to defend itself. 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... read more

When to Consider ‘Both Sides of the Dot’ in a Domain Name Dispute

Yet another UDRP decision has found the top-level domain name relevant for purposes of confusing similarity. In the case, filed by Michelin, the panel found the domain name <tyre.plus> confusingly similar to the trademark TYREPLUS. Specifically, the panel wrote: If one ignores the “dot” between the Second-Level Domain (“tyre”) and the Top-Level Domain (“plus”), the mark and the Domain Name are identical. In most cases under the Policy, the Top-Level Domain (“TLD”) is ignored when considering confusing similarity. In recent years, however, and particularly with the emergence of numerous new TLDs, panels in certain circumstances have deemed it appropriate to... read more
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