Introduction
URS (“Uniform Rapid Suspension System”) is a streamlined and relatively inexpensive domain name dispute resolution procedure.
URS was introduced in 2013 to supplement the existing UDRP (Uniform Domain Name Dispute Resolution Policy). URS is faster and cheaper than UDRP and is designed only for clear-cut cases of cybersquatting.
While the standard of proof in UDRP is “balance of probabilities” (“more likely than not”), the standard in URS is “clear and convincing”.
This means that if you file a URS complaint, you should provide a very strong evidence to the examiner leaving no doubts and no issues of fact.
One can easily fail in URS complaints and below are the examples of past failures that led to denials of complaints. Some of these cases also illustrate how respondent can defend its domain name in URS proceedings. This essay is based only on cases of one of the URS providers, MFSD, based in Milan, Italy. This article did not analyze any URS cases of the Forum.
1st Element: Complainant’s trademark rights and confusing similarity with the disputed domain name
Failure to prove trademark rights
URS dispute No. D5C230DE, disputed domain name <planetwin365.paris>
The Examiner found that the Complainant was not the registered owner of the EU trademark and the Complainant failed to provide proof of assignment of trademark rights. A quote from the determination: “the Complainant has not provided any evidence of any transfer of rights with regards to the European Union Trademark No. 008729791 “planet win 365”. The total transfer recordal application provided as evidence by the Complainant is irrelevant as (i) it does not prove that said application was upheld by the EUIPO and (ii) the current listed owner of said trademark is not the Complainant, according to the official trademark database of the EUIPO.”
URS dispute No. CCB18C9E, disputed domain name <WRAYWARD.LIFE>
The Complainant failed to prove rights to the service mark “WRAY WARD”. A quote from the determination: “Complainant has only provided a screenshot of its official website which does not sufficiently show valid service mark. This document does not show valid national or regional registration and its current use.”
Failure to prove confusing similarity
URS DISPUTE No. B9F32441, disputed domain name <PKES.ONLINE>
The Complainant succeeded in proving its rights in “PIKOLINOS” trademarks, however it failed to convince the examiner that the disputed domain name <PKES.ONLINE> is confusingly similar with these trademarks.
A quote from the determination: “it is the Examiner’s opinion that the sign “pkes” is not identical or confusingly similar to PIKOLINOS trademark as requested by the URS Procedure Rules. Indeed, the abbreviation term “pkes” means “children” in Spanish language, so that no right may be claimed neither by the Complainant nor by any third party over said generic term.”
Conclusion: as a complainant you need to demonstrate your trademark rights and that your trademark is a word mark (i) for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed. If you rely on a registered trademark, provide an extract from a database confirming that you own this trademark or it was assigned to you, provide a proper proof of assignment (e.g. extract confirming recordal of the assignment). If you rely on validation through court proceedings or specific protection by a statute or treaty, provide the relevant evidence. Providing just screenshots from a website is insufficient to prove trademark rights under URS.
Arguing confusing similarity in some cases may be problematic (this applies to UDRP disputes as well) and this was demonstrated by the <PKES.ONLINE> case.
2nd element: Legitimate right or interest to the domain name
URS dispute No. 7E129AAA, disputed domain name <veolia.vip>
The Respondent proved ownership of the VEOLI trademark in China for class 2. A quote from the determination: “Despite trademark class is not one of the considerations in accessing this element, the Examiner accepts that being a trademark owner of the term VEOLIA, Respondent has rights or legitimate interests to the domain name”.
Conclusion: trademark rights of respondent serve as a proof of legitimate right or interest.
3rd element: The domain was registered and is being used in bad faith
URS DISPUTE No. 5A2984DD, disputed domain name <VEOLIA.AFRICA>
The Complainant succeeded in establishing the first two elements but failed the last one. The Examiner was not persuaded by the claims that the Respondent (based in South Africa) was aware of Complainant’s trademarks when she registered the disputed domain name and hence, the examiner did not find bad faith registration.
A quote from the determination: “The domain name redirects to a default page of the registrar, which does not constitute a proof of bad faith use under URS criteria. The URS Procedure provides indication on assessing bad faith use, all of them requiring actual evidence of bad faith use. Intended or potential use of the domain name are not proof of bad faith use under URS criteria.”
URS DISPUTE No. 38D38101, disputed domain name <SUPERGANEGOZIO.ONLINE>
The Complainant failed to establish bad faith. A quote from the determination: “The Complainant claims that it had already sent a report about the disputed domain name alleging trademark and copyright infringement. However, the Complainant did not attach the report to the complaint…The only proof provided by the Complainant to possibly support the bad faith element were copies of email messages sent by some of its customers that question the nature of the website by the disputed domain name. However, there is no any further proof of any activity on the website by the disputed domain name and such emails alone in the absence of any additional evidence are inconclusive.”
Conclusion: 3rd element is always tough to demonstrate and it applies to both UDRP and URS. Since the standard of URS proceedings is higher and examiner’s role is limited, Complainants should provide very strong evidence of bad faith. Under paragraph 9.1 of URS Procedure “there will be no discovery or hearing; the evidence will be the materials submitted with the Complaint and the Response, and those materials will serve as the entire record used by the Examiner to make a Determination”.
Final thoughts
While URS is meant to be a simplified and fast procedure with a rather strict word limit (explanatory statement can only be up to 500 words), the complaint and the evidence submitted have to comply with the “clear and convincing” standard. The complainants should persuade URS examiners that there are no issues of material facts unresolved. This actually requires serious preparation, collecting and preserving evidence and drafting persuasive yet rather short complaints.
Under paragraph 8.6 of URS Procedure if the Examiner finds that all three standards are satisfied by clear and convincing evidence and that there is no genuine contestable issue, then (and only then!) the Examiner shall issue a Determination in favor of the Complainant.
If the Examiner finds that any of the standards have not been satisfied, then the Examiner shall deny the relief requested, thereby terminating the URS proceeding without prejudice to the Complainant to proceed with an action in court of competent jurisdiction or under the UDRP. The cases above demonstrate that one can easily fail when not paying enough attention to details, e.g. by failing to provide proper proof of trademark rights or by failing to attach screenshots and other possible evidence of respondent’s bad faith.
Any respondent who believes a complaint is groundless shall respond. Taking into account a higher standard of proof in URS proceeding for complainants, providing a response significantly increases chances of a respondent to defend her/his domain name.
