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Why Verisign might want URS on .com

by — Policy & Law 3 Comments

Adding URS to .com could benefit Verisign for several reasons.

A picture of a laptop computer on a website with the words "URS on .COM" in the foreground in white letters on a purple callout

This week, Verisign (NASDAQ: VRSN) proposed creating a consensus policy that would bring Uniform Rapid Suspension (URS) to all remaining gTLDs that don’t have it.

It was somewhat surprising. Verisign just renegotiated its .com contract with ICANN and did not add URS to the contract, while other registries added URS when renegotiating. Presumably, it was ICANN staff that asked for URS on those other agreements. So a conscious decision was made not to add URS to the .com contract when updating the agreement to allow price increases. Now, Verisign is in favor of URS.

Why?

It’s a tough question, and it isn’t easy to understand why Verisign makes some of the decisions it does. The company certainly plays the long game. Here are some reasons Verisign might benefit from adding URS.

1. It will make the U.S. government happy – In general, the U.S. government likes rights protections for intellectual property holders. When it amended its Cooperative Agreement with Verisign for .com, the U.S. government said that Verisign would consider adding “trusted notifier” programs. In fact, Verisign is currently operating a test of one such program to take down sites selling opioids.

2. It could remove Verisign from decision-making processes – In general, Verisign doesn’t want to get involved with decisions to suspend sites. It wants other entities, such as UDRP panels and courts, to make decisions. The registrars implement the decisions, and Verisign does so as a last resort. This removes all liability. URS puts a decision into a panel’s hands. When making the URS-on-com proposal this week, Verisign policy manager David McAuley noted:

Doing this — making URS consensus policy — would greatly enlarge application of what has become an important and effective tool for addressing trademark infringement and, in doing that, it also addresses other forms of abuse that can be carried along by infringing cybersquatting domains. And this includes technical DNS abuse like phishing, pharming, delivering malware, things like that, and also some forms of content abuse like selling counterfeit goods on a cybersquatted domain.

So, if outside policies managed by other entities apply to .com, Verisign can wash its hands of having to step in and take action against domains. It can tell advocates for removing, suspending, or transferring domain names that they should use the appropriate mechanism for doing so.

3. It makes .com more like other top level domains – Almost all other gTLDs have URS. Adding it to .com makes .com more like other top level domains. And there’s something about other top level domains that makes Verisign envious: they don’t have price caps. In the long run, Verisign can point to all of the similarities and the one glaring difference between the .com registry contract and other TLD contracts.

Verisign proposes adding Uniform Rapid Suspension to .com domain names

by — Policy & Law 14 Comments

Proposal surprises working group members.

URS on a background with a blue stripe

Verisign (NASDAQ: VRSN) has proposed making Uniform Rapid Suspension (URS) a consensus policy that would apply to legacy top level domains such as .com and .net.

Uniform Rapid Suspension is a quicker, dirtier version of the Uniform Domain Name Dispute Resolution Policy (UDRP). It was introduced along with new top level domain names as a way to assuage concerns that hundreds of new top level domains would lead to a massive surge in cybersquatting.

Although originally created for new top level domains, ICANN has negotiated the extension of URS into legacy top level domain names when it has renewed registry contracts with their operators. However, it did not include URS in the .com and .net contracts when it renewed them.

Yesterday, in a Right Protection Mechanisms PDP working group call, Verisign Policy Manager David McAuley made the proposal that URS be adopted as consensus policy and thus, apply to .com and .net. He stated:

Doing this — making URS consensus policy — would greatly enlarge application of what has become an important and effective tool for addressing trademark infringement and, in doing that, it also addresses other forms of abuse that can be carried along by infringing cybersquatting domains. And this includes technical DNS abuse like phishing, pharming, delivering malware, things like that, and also some forms of content abuse like selling counterfeit goods on a cybersquatted domain.

Several participants in the working group, including Zak Muscovitch of Internet Commerce Association and Kathy Kleiman of Domain Name Rights Coalition, pushed back on making it consensus policy and if it was an appropriate procedural move to make the proposal.

Phil Corwin, who previously represented Internet Commerce Association but now represents Verisign, noted that, even in the absence of consensus, Verisign could implement URS on .com. He stated that a decision not to come to a consensus on whether URS should apply to the remaining legacy top level domains doesn’t prevent Verisign from seeking an amendment directly with ICANN. However, he stated that he is not aware of any discussions within Verisign to pursue such an amendment.

The call concluded with a general consensus that there was no consensus. So we’ll see where this goes from here.

(Hat tip George Kirikos)

URS Panelist: “Complainant’s business may be worldwide but it is not out of this world”

by — Policy & Law 0 Comments

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[1], 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.

[1] See the ICA’s comment on this issue, here

Zak Muscovitch is General Counsel to the Internet Commerce Association, a group that advocates on behalf of domain name investors.

A strange thing is happening to domain names suspended in URS

by — Policy & Law 4 Comments

…they’re being renewed.

Uniform Rapid Suspension (URS) was introduced as an alternative to Uniform Domain-Name Dispute-Resolution Policy (URDP) when new top level domain names were introduced.

URS is a faster, cheaper version of UDRP. A big difference is what happens when a Complainant wins. In the case of a URS, the domain name is merely suspended instead of being transferred to the complainant like it is in a UDRP.

This has always seemed a bit silly to me. A company pays money to suspend a domain name, only to have it expire and drop at a later date so anyone else can register it? (Perhaps I’m looking at it the wrong way since so many domain names won in UDRPs end up being let go at a later date.)

I analyzed the first 50 domain names that were suspended under URS at National Arbitration Forum to see what happened to them after they expired.

All 50 domain names were suspended between March and June of 2014, which is very soon after new top level domain names were released in general availability. Where are these domain names now? Here’s what I found: Click here to continue reading…

Lawsuit filed over .email domain names

by — Policy & Law 126 Comments

Yoyo.email files lawsuit after barrage of URS and UDRP complaints.

YoYoLast month I wrote about Yoyo.email Ltd, a company that has found itself in legal hot water after registering over 4,000 .email domain names.

Many of the domain names match well known brands, such as 7eleven.email, Geico.email and Budlight.email. As a result, Yoyo has already been on the receiving end of at least 34 URS (Uniform Rapid Suspension) and UDRP cases.

Yoyo.email is fighting back. Last Friday it filed a lawsuit (pdf) in federal district court in Arizona.

The lawsuit, filed against PlayInnovation, seeks declaratory judgement following an adverse URS decision for PlayInnovation.email. Traverse Legal, which is representing YoYo.email, is also using the case to try to get similar relief for all of Yoyo.email’s domain names.

The PlayInnovation.email URS case definitely met the definition of rapid suspension. The domain was registered, URS filed and decision rendered on the same exact day.

Part of Yoyo’s argument is that cases are being filed based on potential future use. The timeline of the PlayInnovation.email case brings home that point.

It also calls into question the accuracy of information in National Arbitration Forum panelist Carol Stoner’s determination.

In finding against Yoyo, Stoner wrote:

Complainant has submitted reliable evidence showing that Registrant has offered the domain name for sale, in accordance with URS 1.2.6.3(a). Complainant has submitted reliable evidence showing that Registrant intentionally attempted to attract for commercial gain, internet users to registrant’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s website or location or of a product or service on that website or location, in accordance with URS 1.2.6.3(d).

Yoyo argues that there was no offer to sell the domain name or evidence submitted supporting these findings.

It certainly seems implausible that PlayInnovation was able to submit such evidence the same day the domain was registered. I’m not entirely sure how PlayInnovation found out about the registration so quickly; “PlayInnovation” is not registered with the Trademark Clearinghouse.

The suit also questions if a UDRP panelist cut-and-pasted information from one case into an irrelevant one.

URS is supposed to be fast and inexpensive, but is justice being served too quickly?

Yoyo contends that its use of brand-matching .email domain names will be in a backend manner that will not be visible to web users, and thus does not run afoul of cybersquatting rules.

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