First URS Cases Offer Little Guidance

As readers likely know by now, the Uniform Rapid Suspension system (URS) is a quick and low-cost dispute process available to brand owners when confronted with trademark infringement in a new generic top-level domain (gTLD). Rather than the domain being transferred to the brand owner, as is done in UDRP cases, the domain on the losing side of a URS decision is merely locked and any website content is replaced with a standard notice informing visitors that the domain has been suspended.

As with the UDRP, in a URS complaint the brand owner is required to show that the domain website contains some infringing content or is otherwise being used in bad faith. In one of the first URS decisions to be published, against the domains IBM.guru and IBM.ventures, the Panelist found that the domain owner had no legitimate interest in these domains and was using them in bad faith where the domains simply redirected visitors to the IBM.com website. But what happens when the domain only resolves to a parked page or to nothing at all?

In a URS case against BBVA.guru (BBVA is a well-known banking and financial group based in Spain) the domain owner claimed he was planning to develop a game whose acronym was BBVA and which had nothing to do with finance or banking. Although the decision does not say how this website resolved, the Panelist held that the alleged use is purely hypothetical and that no evidence was presented to support the domain owner’s claim. He also noted that the term BBVA is not a common or generic word and so it couldn’t be presumed that the domain owner intended to infringe on the well-known trademark.

Finally, there’s the opinion in a URS case against the domain AEROPOSTALE.clothing that merely recites the rote standards set out in the URS and finds for the brand owner with no further explanation. I personally find this to be rather disappointing since it recites few facts of the case (no mention of any website content at this domain) and offers no guidance for future URS parties.

So where does this leave us when faced with a domain that’s parked (resolves to no website) as is the case with so many new gTLDs? If the domain owner defaults and the infringed trademark is distinctive and well-known then perhaps a Panelist could rely on the BBVA or AEROPOSTALE cases. However, if the mark is capable of different meanings or is less famous a Panelist might decide that, since the domain has only recently been registered, it’s possible that the owner is working on a legitimate website – a non-competing business or even a fan page perhaps?

I suspect that URS Panelists will be presented with such fact patterns fairly soon and hopefully a consistent pattern of decisions will emerge. Given the very high standard of proof and unforgiving nature of the URS process I expect brand owners will appreciate all the guidance they can get!