gTLD DISPUTES
IN THE SPOTLIGHT
THE BEST WAY TO FIGHT
As the number of web addresses rises and online brand protection costs increase, cultivating a cost- effective strategy for handling domain name disputes becomes essential. Don Moody and Khurram Nizami of New gTLD Disputes, a domain dispute outsourcing provider, answers TBO’s questions on the current state of dispute resolution.
ICANN has created a new Uniform Rapid Suspension System (URS). How is this different from the UDRP?
T e URS diff ers from its well-known predecessor, the Uniform Domain-Name Dispute-Resolution Policy (UDRP), in many ways. Aside from certain procedural diff erences, such as reduced fi ling fees and an appeal mechanism, the URS also carries a higher burden of proof.
Unlike with the UDRP, a complainant needs to establish each requirement of the URS—such as bad faith or a lack of rights or legitimate interests—by “clear and convincing evidence”.
T e UDRP was created to serve as a simpler and quicker mechanism for resolving disputes than
42 Trademarks & Brands Online
litigation, but the URS takes this notion one step further. As a result, brand owners may have very little room to overcome potential free speech or fair use arguments raised by a registrant. Also, unlike the UDRP, the sole remedy available under the URS is the suspension of a domain name; an address will not be cancelled or transferred to the complainant.
Trademark owners should keep these and other aspects in mind when deciding whether to initiate a URS proceeding, and would be wise to view the URS as a complement to the UDRP, not a replacement for it. T e two mechanisms are not mutually exclusive: a brand owner could conceivably bring both a URS and a UDRP against the same domain.
Volume 3, Issue 2
Where do the newly created post- delegation dispute procedures fi t in?
Many of these proceedings involve claims
against a top-level registry, not a second-level registrant—as with the UDRP or URS. T ey operate in a similar manner to new generic top- level domain (gTLD) objections, but apply aſt er a string has been delegated by ICANN.
For example, the Trademark Post-Delegation Dispute Resolution Procedure is, not surprisingly, trademark-based. It acts as sort of a ‘super UDRP’ for situations where a registry is either using a TLD itself to facilitate infringement, or is engaging in a “systematic” or “substantial pattern or practice” of allowing infringing second-level
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