Last week we wrote Part I of a series of columns on the new gTLDs being subject to the URS Rules:
The URS (Uniform Rapid Suspension System) is intended to offer a lighter complement to the existing UDRP (Uniform Domain Name Dispute Resolution Policy). All of the new gTLD extensions are subject to the URS Rules. If you are going to invest in any of the new gTLDs that will be flooding the market, you need to be aware of how these new rules will effect your investments.
PART I – What is the URS and how does it differ from the UDRP? Can be found here –
DOMAINERS BEWARE! The new gTLD extensions are all subject to the new URS. How will that effect you?
PART II – What should you, the Respondent in a URS Action, do if you are served with a Complaint?
Unlike the UDRP which gives you 20 days to file a Response, you only have 14 calendar days to file your Response under the URS, but the Provider (WIPO or NAF) will send your Response to the Complainant. If the action is for less than 15 domain names, there is no fee to be paid with the Response. However, should you get an adverse ruling from the Examiner (no longer a “Panelist”), there is an Appellate Process which we shall discuss in a future article which does require a fee to be paid.
The Response shall be no longer than 2,500 words, excluding attachments, and the content of the Response should include the following:
Confirmation of Registrant data.
Specific admission or denial of each of the grounds upon which the Complaint is based.
Any defense which contradicts the Complainant’s claims.
A statement that the contents are true and accurate.
In keeping with the intended expedited nature of the URS and the remedy afforded to a successful Complainant, affirmative claims for relief by the Registrant will not be permitted except for an allegation that the Complainant has filed an abusive Complaint.
Similar to the UDRP, the Response can contain any facts refuting the claim of bad faith registration by setting out any of the following circumstances:
Before any notice to Registrant of the dispute, Registrant’s use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
Registrant (as an individual, business or other organization) has been commonly known by the domain name, even if Registrant has acquired no trademark or service mark rights; or
Registrant is making a legitimate or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
Such claims, if found by the Examiner to be proved based on its evaluation of all evidence, shall result in a finding in favor of the Registrant.
The Registrant may also assert Defenses to the Complaint to demonstrate that the Registrant’s use of the domain name is not in bad faith by showing that:
The domain name is generic or descriptive and the Registrant is making fair use of it.
The domain name sites are operated solely in tribute to or in criticism of a person or business that is found by the Examiner to be fair use.
Registrant’s holding of the domain name is consistent with an express term of a written agreement entered into by the disputing Parties and that is still in effect.
The domain name is not part of a wider pattern or series of abusive registrations because the Domain Name is of a significantly different type or character to other domain names registered by the Registrant. (Like family names, etc.)
Other factors that will be considered by the Examiner to provide legitimacy to the Respondent are:
Trading in domain names for profit, and holding a large portfolio of domain names, are of themselves not indicia of bad faith under the URS. Such conduct, however, may be abusive in a given case depending on the circumstances of the dispute. The Examiner must review each case on its merits. And sale of traffic (i.e. connecting domain names to parking pages and earning click- per-view revenue) does not in and of itself constitute bad faith under the URS. The Examiner will take into account the nature of the domain name; the nature of the advertising links on any parking page associated with the domain name; and that the use of the domain name is ultimately the Registrant’s responsibility.
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