This page contains a Flash digital edition of a book.
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


www.trademarksandbrandsonline.com


Page 1  |  Page 2  |  Page 3  |  Page 4  |  Page 5  |  Page 6  |  Page 7  |  Page 8  |  Page 9  |  Page 10  |  Page 11  |  Page 12  |  Page 13  |  Page 14  |  Page 15  |  Page 16  |  Page 17  |  Page 18  |  Page 19  |  Page 20  |  Page 21  |  Page 22  |  Page 23  |  Page 24  |  Page 25  |  Page 26  |  Page 27  |  Page 28  |  Page 29  |  Page 30  |  Page 31  |  Page 32  |  Page 33  |  Page 34  |  Page 35  |  Page 36  |  Page 37  |  Page 38  |  Page 39  |  Page 40  |  Page 41  |  Page 42  |  Page 43  |  Page 44  |  Page 45  |  Page 46  |  Page 47  |  Page 48  |  Page 49  |  Page 50  |  Page 51  |  Page 52  |  Page 53  |  Page 54  |  Page 55  |  Page 56  |  Page 57  |  Page 58  |  Page 59  |  Page 60