URS “not always best option”, says INTA

A cybersquatting system designed specifically for the new gTLDs may not always be the best option for brand owners, the International Trademark Association (INTA) has advised.

The Uniform Rapid Suspension System (URS) is designed to deal with clear-cut cases of infringement more quickly than existing mechanisms.

In a bulletin published on August 15, INTA said that at the time of writing 92 URS cases have been filed, with complaints approved in 71 cases but denied in nine; 12 cases were pending.

Of the victors, Facebook (the first) and IBM are two of the most high-profile; the latter’s win appearing to signal an “early trend favouring complainants, despite the heightened ‘clear and convincing’ standard required,” said INTA.

Virgin Enterprises, however, is probably the best-known company to have lost a dispute, over the ‘branson.guru’ domain in March.

Brand owners should pay particular attention to this and other defeats, said INTA, as a common theme can be found in each.

“The nature of the URS—intended as an efficient, low-cost dispute mechanism for obvious cases of cybersquatting—may mean that it is not always the best option for brand owners.

“Where the trademark at issue is weak or arbitrary (ie, it also serves as a generic term), brand owners should pursue a URS action only where the actual content on the subject website makes it apparent that the registrant intends to confuse users. Otherwise, certain URS panels appear to be reluctant to suspend domain names in the face of plausible good faith, even if uncorroborated by concrete evidence,” it said.

Therefore, INTA said, the URS might be a useful complement to the Uniform Domain Name Dispute Resolution Policy, rather than an alternative. It might be most appropriate when a brand owner wishes to promptly suspend an egregious website yet “does not wish to assume the added cost necessary to acquire the domain name”.

“Brand owners with particularly famous or fanciful marks may be able to take advantage of the URS more easily, yet they should still be mindful that the term after the dot will likely be considered in a potential fair use assessment,” said INTA.