In this multi-part series, I look at the Uniform Rapid Suspension (URS) policy, a domain name dispute resolution policy that the RPM PDP working group of ICANN is currently reviewing. In a fair and unbiased review of the facts, the URS would be abandoned as a failed idea. However, in the ICANN world, that fair and unbiased review doesn’t exist, and instead ICANN insiders wish to impose that flawed policy upon even more domain name registrants.
To understand the history of the URS, we need to start with the Uniform Domain-Name Dispute-Resolution Policy (UDRP). The UDRP was developed to address clearcut cybersquatting, as an alternative dispute resolution mechanism available to trademark holders. It was not intended to replace the court system or give new rights to TM owners, but was:
…designed to provide trademark holders with the same rights
they have in the physical world, to ensure transparency, and to guarantee a dispute resolution mechanism with resort to a court system (see US Government White Paper (1998) in the UDRP Historical Timeline).
The UDRP applied to legacy gTLDs like dot-com, dot-net and dot-org.
However, when ICANN wanted to dramatically expand the number of new gTLDs, creating TLDs like .guru or .horse, trademark owners pushed for a “rapid suspension” policy, a cheaper and faster version of the UDRP intended for “slam dunk” cases, ones which are generally indefensible. It’s comparable to a motion for summary judgment, intended for situations where a more complex examination isn’t necessary, because the facts are so overwhelmingly obvious against the domain name owner. The URS policy was intended only for new gTLDs, however ICANN staff have repeatedly inserted the URS into legacy gTLD contracts, most recently for dot-org, despite opposition from the public. As the Electronic Frontier Foundation properly points out in their reconsideration request, the URS was not intended for .ORG registrants (pp. 2-3).
Under the UDRP, a complainant (trademark owner) must show that:
- the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
- the domain owner has no rights or legitimate interests in respect of the domain name; and
- the domain name has been registered and is being used in bad faith
This is a 3-pronged test, and all 3 elements must be proven for the complainant to win. The first prong is relatively straightforward, owning a trademark similar to the domain. The second one concerns the legitimate interests of the domain owner. Ultimately, it’s the third prong that is often decisive, the need to show that there was both bad faith registration of the domain name and bad faith usage. If a complaining trademark owner is victorious, they typically seek the transfer of the domain name from the domain owner to themselves (there is a domain cancellation option, but it’s less frequently used).
Under section 1.2.6 of the URS, their 3-pronged test is similar to that of the UDRP. However, sections 8.2 through 8.6 of the policy state the complainant should only win if there is “clear and convincing evidence” and “no genuine issue of material fact” which combined create a much higher standard than that of the UDRP (which instead has a “preponderance of the evidence” standard).
The remedy of the URS is only suspension of the domain name, and there is no transfer option available (although, as I’ll discuss in future parts of this series, trademark holders want to change this!). From the domain owner’s point of view, though, the suspension doesn’t permit them to renew the domain name, so ultimately they will lose their asset (once it expires and is deleted).
Why would a trademark owner use the URS, instead of the UDRP, if the remedy is merely suspension and standard of proof is higher? In exchange, trademark owners get less complex filings (lower word limits), cheaper fees (a few hundred dollars, compared to roughly $1,000 for the UDRP), shorter time limits for a response and ultimately a quicker process to a decision. [There are other important differences between the two procedures that I’ll discuss in future parts of this series, but these are some of the highlights in this introductory article.]
Unfortunately, the theory of how the URS is supposed to work fails when it meets reality. While the UDRP has numerous flawed decisions that have been criticized, the URS is often worse. URS decisions are a sad joke, even compared to the UDRP. While the UDRP is often described as one-sided in favour of complainants, the URS in practice is even worse. Most domain industry stakeholders haven’t been tracking the URS decisions closely, because they apply to relatively worthless new gTLD domains, as opposed to more valuable dot-com, dot-net or dot-org domains. But, as ICANN staff impose the URS on legacy gTLDs, more valuable domain names would be put at risk via this flawed dispute resolution procedure. There is no better way to demonstrate these flaws than to actually look at real recent decisions by URS panelists at National Arbitration Forum (the main URS provider):
kbs.llc (October 29, 2018)
Here, the panelist states: “Respondent is purportedly using the Domain Name to direct users to an inactive website that does not contain any content.” Right away, alarm bells should have been raised, as the domain name is not being “used in bad faith”, as it’s not being used at all. However, instead of making that proper determination, the panelist instead found for the complainant, using the following reasoning “In the present case, the disputed Domain Name is purportedly being used to direct users to an inactive website without any content, which no doubt adversely affects the owner of the trademark KBS and the website kbs.com. This activity does suggest beyond any reasonable doubt that Registrant has intentionally attempted to disrupt the business of a competitor, and therefore is being used in bad faith.” This decision represents a total perversion of the URS, as this is not the fact situation for which it was ever intended. Short acronym domains have many competing uses, and there is simply no evidence in this dispute that the complainant was ever targeted, as the domain is simply not in use. The “clear and convincing” standard is being mocked by this panelist. “KBS” as an acronym has many uses. While “passive holding” arguments might fly in a UDRP, under a specific fact situation, that simply isn’t “clear cut” for this fact situation. Although the domain owner did not respond, they shouldn’t have to given the high burden required of the complainant, a burden clearly not met by any reasonable interpretation of the policy. Instead, biased panelists routinely make these decisions in favour of the complainants, as you’ll see in other examples.
cfa.club (October 25, 2019)
In this case involving a Chinese domain name owner, the panelist stated: “The disputed domain name resolves to an inactively held website.” Once again, alarm bells should be going off, as this is not the type of case for a URS, as the domain name wasn’t being used in bad faith, as it wasn’t being used at all. The panelist then goes on to “reason” that “It is inconceivable to the Examiner that Respondent was unaware of Complainant and its trademark rights when it registered the disputed domain name which is identical to Complainant’s CFA registered trademark. Given the well-known character of Complainant’s CFA trademark, Respondent must have had Complainant’s trademark in mind when registering the disputed domain name.” Inconceivable? This is yet another acronym with many potential uses. The panelist, Flip Jan Claude Petillion, is essentially stating what a complainant’s attorney might argue, as opposed to what a neutral judge should be determining based on facts and reasoning. [Mr. Petillion is even a member of the RPM PDP Working Group which is reviewing this policy!] For a Chinese registrant, legitimately registering a short domain name beginning with the letter “C” (which could stand for “China”) isn’t “inconceivable” — again, the “passive holding” doctrine from the UDRP is being misapplied here, where the burden of proof should be much higher. The panelist even asserts that “…given the well-known character of the Complainant’s CFA trademark, it is difficult to imagine any future good faith use of the disputed domain name by Respondent.” There are many potential uses of “CFA” as noted above (167 examples via Acronym Finder alone). The complainant doesn’t have a monopoly on the term in reality, but the panelist seems to imagine that they do so for the purposes of this URS decision. One of the flaws of the URS is that the disputes are conducted in English, and here a Chinese registrant is at a severe disadvantage in the process (I’ll discuss this issue in more detail in future parts of this series).
cfa.business (November 1, 2019)
The facts in this case are nearly identical to that of cfa.club, as the cfa.business domain was inactive and not being used. Here, the panelist makes the correct decision, stating: “Complainant provides evidence showing that the disputed domain name is not being used. Since the standard of review in URS proceedings is “clear and convincing”, and Complainant does not explain why failure to use the disputed domain name could constitute bad faith use, the Panel finds that Complainant has not satisfied its burden of proof for this element.” This was a case involving the identical trademark as cfa.club, i.e. via the CFA Institute, and was also a case in which the domain owner didn’t respond. Why are the two decisions different? Only the panelists differed (in this case, Richard W. Hill). Judicial outcomes shouldn’t depend on which panelist one draws – justice should be uniform.
cfa.community (October 23, 2019)
In this third example of a “CFA” dispute, the panelist found for suspension, but provided not a shred of reasoning or facts within the decision to support it! For the first prong of the test, the panelist didn’t even mention the trademark. For the second and third prongs, the panelist simply repeats the standard required to be met, but then doesn’t provide any reasoning! Essentially, this looks like the panelist was given a blank template, and didn’t fill anything out. Even more scary is it appears as though the “template” has the default to be in favour of the complainant. This is not an isolated decision, as Professor Rebecca Tushnet (a member of the RPM PDP) found similar cases in her comprehensive review presented in May 2018, showing many panelists didn’t articulate any evidentiary basis for a decision. You might think that National Arbitration Forum would have cleaned up their act since those findings, but this decision shows that this situation persists even today.
bloomberg.best (July 1, 2019)
Here, the dispute involves a common surname, “Bloomberg” which was a parked domain name. However, rather than pointing to ads related to the financial company’s products, the panelist used bizarre reasoning to find that non-infringing links were bad! The panelist states: “Moreover, Respondent’s current and apparently only use of the Domain Name is a parked website. Therefore, Respondent cannot claim a right or legitimate interest in the domain based on its use of the Domain Name or a corresponding name in connection with a bona fide offer of goods or services. Google Inc. v. tnt digital media, NAF Decision 1424509, http://www.adrforum.com/domain
of goods or services.’).” (emphasis added) The cited UDRP case is entirely different, because (i) UDRP has a different burden of proof, and (ii) the domains in dispute are entirely of a different nature, i.e. “GoogleTVAds.com” is clearly referencing the famous Google brand, whereas “Bloomberg” is a common surname. Indeed, if the Bloomberg.best links were entirely unrelated to the Bloomberg financial complainant, this should have been helpful to the domain owner. i.e. if “infringing use” is bad, and “non-infringing use” is also bad, then the panelist is saying that every use is bad! This is yet another example of panelists making the wrong decision in favour of complainants (which helps you to understand why trademark owners would really love to apply this to dot-org and ultimately dot-com!).
skx.science (August 9, 2019)
This was a win for the domain owner (respondent), due to the third prong of the test (which is the correct analysis, namely “The Complainant’s Mark consist of three letters, SKX. This combination of letters is not so distinctive and/or well known that it would be implausible to conclude Respondent did not intentionally copy Complainant’s Mark when it registered the Disputed Domain Name. Said the other way around, under the “clear and convincing” standard the examiner cannot dismiss the possibility that Respondent developed this combination of letters independently and registered the Disputed Domain Name innocently for purpose of the URS.” So far, so good (contrast this with some of the dubious cases above). However, despite that positive outcome, the decision still makes the worrisome and incorrect finding for the 2nd prong of the test, stating that “Complainant has also established that the Disputed Domain Name resolves to an Internet parking page, which is not a bona fide
offering of goods or services or a fair use for purposes of the URS.” That’s simply wrong, as domain name parking can certainly be a bona fide use of a domain name. Combined with the Bloomberg.best statement above that domain name parking even non-infringing links was considered bad, this shows that panelists are quick to suspend non-infringing sites, a fact situation that the URS was simply not designed for when it was being pushed for “clear and convincing” cases of cybersquatting.
Consider a hypothetical case where someone brought a URS complaint against Google for their non-use of the YT.com domain name (the domain is inactive, but is a very valuable domain, that could be used for YouTube URL shortening, or other uses). The URS is supposed to have
such a high standard that Google doesn’t have to respond, and should
win if the domain name isn’t even being used. But, would you want URS panelists to even be deciding cases like this, given their track record above? Certainly not.
Despite these obvious problems with the URS, which I’ll continue to analyze in future parts of this series, the URS is being pushed for adoption into legacy gTLDs like dot-com, dot-net and dot-org as a mandatory procedure that registrants are exposed to, who could thus lose their valuable property. That’s unacceptable. Indeed, one of the proposals I made in the RPM PDP (when I was a member, before I was unjustly banished) was to eliminate the URS entirely, and to not make it a consensus policy applicable to legacy TLDs.
However, the current chairs of the RPM PDP are blatantly violating the working group rules, regarding even publishing that proposal! They are actively (this week!) proposing to exclude those proposals from the Initial Report. The co-chairs don’t even want the public to be aware of the possibility that the URS shouldn’t be consensus policy, and other vital proposals to reform it (I submitted roughly a dozen important proposals, and there were more than 30 individual proposals in total). This kind of censorship of viewpoints should be disturbing to all within ICANN, given in particularly that important stakeholders (domain name registrants like myself) are under-represented in the working group. This demonstrates capture of the working group processes by those opposed to domain name registrants’ rights, as important proposals are quietly killed before the broader community can even become aware of the issues.
As Andrew Allemann of DomainNameWire.com recently observed, I was the individual who warned of private equity acquiring PIR if dot-org fee caps were removed. I’ve been a beacon on many issues relating to the rights of domain name registrants. This further behaviour by the co-chairs of the RPM PDP working group, attempting to kill legitimate proposals before they see the light of day in the initial report, says more about them and how broken ICANN is as an institution, than it does about the proposals themselves (which are meritorious and serious ones). In a fair fight, meritorious proposals win out. But, in the ICANN world, insiders tilt the playing field unfairly.
However, I will continue to raise awareness via this blog. In coming parts of this series, I will highlight other aspects of the URS , to help educate the community on these issues affecting your rights.