The UDRP and URS mechanisms for tackling cybersquatting each have their own pros and cons, so picking between the two may depend on the specific nature of the case. Victoria Friedman and Steve Shape of Dennemeyer & Associates report.
When seeking to recover a cybersquatted domain name, many trademark practitioners are unsure whether they should proceed with the Uniform Domain-Name Dispute-Resolution Policy (UDRP) or the Uniform Rapid Suspension System (URS) process. Which is the right solution for you?
The URS was drafted not to compete with the UDRP, but to complement it—the URS almost exclusively focuses on the new generic top-level domains (gTLDs). The URS process is generally similar to the process under the UDRP.
For both, the trademark holder must prove that:
The domain name is identical or “confusingly similar” to the legally held trademark;
The domain name has no legitimate rights; and
The domain name was registered in bad faith.
Under the URS, an administrative review is conducted within two business days of the submission. Upon completion of the review, the registry operator for the domain name freezes the domain and sends notice to the cybersquatter. The cybersquatter has 14 days to submit a response. In order for the trademark holder to prevail in the proceeding, it must prove not only that the domain names are identical or “confusingly similar,” but that it: (i) holds a valid and current registration; (ii) holds validation via court proceedings; or (iii) has specific protection by an effective treaty or statute at the time the complaint is filed. Continue reading by clicking the link below.
Steven Shape is a registered patent attorney and electrical engineer who has represented preeminent technology companies in complex, high-stakes intellectual property litigation and foreign patent and trademark prosecution matters since 1982.
Steven Shape has successfully represented clients in complex business litigation concentrating on patent infringement and defending infringement claims, trademark and Lanham Act claims, copyright claims, unfair competition claims, false advertising claims, trade secret claims and related antitrust and business causes. He has served as counsel in a number of jury and bench trials and has extensive experience in all aspects of Federal Court litigation including preliminary injunctions, summary judgments and appeals.
The authors contribute to this blog in their personal capacity. The views expressed are their own and do not necessarily represent the views of Dennemeyer IP Solutions, Dennemeyer & Associates, or Dennemeyer Consulting.