Uniform Rapid Suspension is designed for cases with an overwhelming evidence of bad faith.
This post is part of a series on UDRP issues by the Internet Commerce Association.
Uniform Rapid Suspension (URS) is a relatively new mechanism for trademark owners to employ in cases of cybersquatting. It enables a trademark owner to suspend a domain name (but not obtain the transfer, as that is left for the UDRP) in cases where there is “clear and convincing” evidence that the registrant registered and used the disputed domain name in bad faith. This is a higher evidentiary standard than in the UDRP, which is “on the balance of probabilities”.
The URS only applies to new gTLDs and a handful of other gTLDs, and is intended to be a quicker procedure than the UDRP where the evidence of bad faith is overwhelming. Suspending a domain name and thereby disabling an associated website, particularly on only 14 days’ notice to the registrant, is a severe remedy and therefore should be limited only to those cases where there is no genuine issue in dispute and the matter is easily decided in a couple quick paragraphs by the panelists.
Most trademark attorneys who bring a URS proceeding understand the limitations of the URS. It is not intended as a substitute for the UDRP, nor is it intended to make it easy to suspend a domain name absent clear and convincing evidence of bad faith.
In the case of supercluster.space, Oracle International Corporation brought a URS against the registrant. Oracle International had a trademark for SUPERCLUSTER in connection with its computer hardware and software business and there was evidence that the respondent was offering the domain name for sale. Nevertheless, as NAF Panelist Darryl C. Wilson correctly pointed out:
Complainant’s mark is fanciful and distinct in regards to computers but is merely descriptive regarding astronomy and cosmology. Superclusters are found in space and have been part of the common vernacular relative to space discussion since the early 20th century. Use of superclusters in connection with space does not indicate that Registrant is any way acting in bad faith per Complainant’s computer business. Complainant’s assertions that its business is worldwide and therefore Registrant must have registered the .space domain name in recognition of the scope of Complainant’s business is logically inconsistent. Complainant’s business may be worldwide but it is not out of this world. Procurement of a trademark for a common term does not preclude others from using the term in its common manner. [emphasis added]
Like with the UDRP, in the URS the registration of common terms – even for resale – is not considered bad faith absent a specific intent to target a particular brand owner. In this case, the Complaint failed because the Complainant attempted to suspend the registrant’s domain name, without any clear and convincing evidence of an intent to capitalize on the Complainant’s mark which was limited to computers. The registrant had every right to register the disputed domain name, as having a trademark for one category of goods or services, does not enable a trademark owner to monopolize a common term.
As such, this case presents an important lesson for trademark owners and their attorneys who are considering the URS. The URS can be an effective tool in dealing with cybersquatting in new gTLDs, but it is not an avenue for interfering with the registration of common terms absent clear evidence of bad faith. In all cases, Panelists must enforce the applicable threshold of clear and convincing evidence of bad faith registration and use. Mere non-use in connection with a common term doesn’t come close to meeting this threshold. The Internet Commerce Association applauds Panelist Darryl Wilson in upholding this crucial test under the URS.
Zak Muscovitch is General Counsel to the Internet Commerce Association, a group that advocates on behalf of domain name investors.