To fight against cybersquatting, the UDRP procedure was first implemented more than 10 years ago to fight against these practices. It is an effective procedure. It has enabled more than 31,000 disputes to be handled since its inception in late 1999. Subsequently, and as part of the launch of the new gTLDs, ICANN created the URS procedure to supplement the UDRP procedure. This new simplified procedure is cost effective and provides a faster alternative to trademark owners. The question is what elements differ from both procedures?
| UDRP | URS | |
| Domain names at issue | gTLD, new gTLDs and some ccTLDs (can vary in terms of authorized centers) | New gTLDs and some ccTLDs |
| Communication | Electronic | Electronic |
| Authorized centers to receive complaints | 1) World Intellectual Property Organization (WIPO)
2) The National Arbitration Forum (NAF)
3) The Asian Domain Name Dispute Resolution Center (ADNDRC)
4) The Arab Center for Domain Name Dispute Resolution (ACDR)
5) The Czech Arbitral Court (CAC) |
1) MFSD Center
2) The National Arbitration Forum (NAF)
3) The Asian Domain Name Dispute Resolution Center (ADNDRC). |
| Maximum number of words | Complaint: 5000 words maximum
Response: 5000 words maximum |
Complaint: 500 words maximum
Response: 2500 words maximum |
| Language | Language of the registration contract (unless otherwise agreed or under specific circumstances) | Complaint: English
Response: English, unless notified otherwise |
| Elements of the complaint | 1) Identical or similar domain name that could be confused with the trademark.
2) No rights or legitimate interest in the domain name 3) The domain name was registered and used in bad faith |
1) Identical or similar domain name that could be confused with a trademark in relation to which the applicant has a valid national or regional registration which is in use; or which has been validated through court proceedings; or which has specifically been protected by statute or a treaty in force at the time when the URS complaint was initiated
2) No rights or legitimate interest in the domain name 3) The domain name was registered and used in bad faith |
| Time limit to respond | 20 calendar days | 14 calendar days |
| Extension of time limit to respond | At the defendant’s request or following an agreement between the parties
No express limitation period |
At the defendant’s request
7 calendar days maximum |
| Standard of proof | Preponderance of evidence | Clear and convincing evidence
No actual question of fact must be raised |
| Rectification of irregularities | Control by the arbitration center within 5 days of the filing of the complaint
5 calendar days to rectify the irregularity, else dismissal of the complaint |
Control by the arbitration center within 2 days of the filing of the plaint
No possibility of rectifying an irregularity due to the speediness of the procedure |
| Time limit for decision | Within 14 days of notification of the panel | Within 5 working days from the filing of the complaint |
| Sanction | Transfer or cancellation of the domain name | Suspension during the registration period of the domain name
Possibility to extend the suspension for 1 additional year |
| Appeal | No | Yes |
| Panel | 1 or 3 panel members | 1 panel member for assessment and 1 or 3 for appeal |
While the URS procedure has the advantage of speed and simplicity, the objective of the UDRP is the complete removal of the disorder. The choice between these two procedures will then take on the establishment of a strong and effective strategy, in line with the real value of the domain name to the trademark owner and the objective to achieve.
Dreyfus proposes to assist you with any URS or UDRP and worldwide considering the best strategy for recovery and protection of your rights.