Uniform Rapid Suspension—the first 100 decisions and an economic analysis

World Trademark Review Online Brand Enforcement 2015

This article first appeared in World Trademark Review Online Brand Enforcement Guide, a supplement to WTR magazine, published by The IP Media Group. To view the guide in full, please visit www.worldtrademarkreview.com.

This article examines some statistics and highlights from the first 100 Uniform Rapid Suspension (URS) decisions. Next, using economic cost analysis, it compares URS with the longstanding Uniform Domain Name Dispute Resolution Policy (UDRP) in order to provide rights holders with the tools to evaluate the relative cost differences under the two scenarios. Both legal analysis and economic analysis can help rights holders decide whether the new URS rule set is the best enforcement mechanism for protecting new generic top-level domains (gTLDs).

A look at the numbers
Currently, two providers administer the URS: the National Arbitration Forum (NAF) and the Asian Domain Name Dispute Resolution Centre.

National Arbitration Forum
As of early September 2014, about 100 URS decisions had been reported by the NAF. Complainants succeeded in 86% of these in having domains suspended, while registrants maintained control of domains in 14%. These statistics are remarkably similar to those of the UDRP, in spite of the higher standard of proof for the URS.

There is a 40% default rate among registrants and a 6% withdraw rate among complainants. The NAF has an average pendency of approximately 18 days. Pursuant to the URS rules, a losing party may appeal a final decision. There have been eight appeals, resulting in two reversals: control of one suspended domain was returned to the registrant and one returned domain was suspended. Two appeals resulted in a split decision whereby there was a dissenting opinion, but the decision of the majority determined the outcome.

Asian Domain Name Dispute Resolution Centre
Only seven decisions have been reported by the Asian Domain Name Dispute Resolution Centre, all of which resulted in suspension of the accused bad-faith registration. There was a 21-day average pendency.

First decision
The first URS decision was a rather mundane default suspension in favour of Facebook against the domain 'facebok.pw'. The fact that Facebook challenged a domain in the country-code TLD '.pw' explains why this complaint pre-dated other URS proceeding by six months. The examiner inferred bad faith from the respondent's pattern of illegitimate domain name registrations, which was demonstrated by Facebook.

Failed attempts
Of the first 100 decisions, there were 14 in which the complainant failed to prove the required elements of the URS rule set (see Brian Beckham, "Exploring the URS as a trademark enforcement option for new gTLDs", World Trademark Review December/ January 2014 for specific details regarding the URS procedure). Four of these decisions denied the complainant relief, even though the registrant submitted no response. The recipe for failure in most of these decisions was a descriptive or generic domain name combined with a plausible story from the registrant as to the legitimate use of that domain. It should come as no surprise that the clear and convincing standard of proof, as measured against words with plain meanings, makes the URS especially challenging for descriptive or generic domains.

To read the rest of this article, please click here.