MFSD
IP Dispute Resolution Center
MFSD on You Tube
MFSD on Facebook
it_IT
8 Dicembre 2021
Login
Pass
Accedi
Uniform Rapid Suspension System

10 TIPS AND TRICKS BEFORE STARTING AN URS DOMAIN NAME DISPUTE

If you intend to claim a domain name registration in a URS dispute, you should consider the followings.

1. Verify the applicabilty of the procedure

The URS applies to all new gTLDs introduced in the root after 2013 (e.g. .club, .shop, .bike, .dubai and also Internationalized Domain Names extensions .online in Cyrillic letters) and to certain ccTLDs that has eliged the URS as an applicable domain name dispute resolution proceeding (e.g. .pw)

2. Assure that your short- and mid-term interest is to shut down the infringing website

The only remedy available in a URS dispute is the suspension of the domain name for the remaining registration period, extendable for an additional year for a payment of a fee to the registrar by the prevailing complainant. Suspension means that the original website is taken down and the domain name will reroute to an informational page of the dispute resolution provider saying: "this website is suspended. The domain name you have entered is not available. It has been taken down as a result of dispute resolution proceedings...". It is not possible to obtain transfer. Ownership of the domain name will remain with the original registrant until it expires.

3. Check your trademark portfolio

The complainant shall hold a registered or court approved or special law or statute-protected word trademark which is in current use and with which the disputed domain name is identical or confusingly similar. Trademark applications, unregistered trademarks, figurative trademarks, trade names, geographical indications or other distictive signs are not sufficient basis for your Complaint and you will unlikely meet the first requirement provided by the URS rules to obtain the suspension of the domain.

4. Assure that your trademark does not constitute a dictionary or generic term

Unlikely will you be able to demonstrate that the registrant has no legitimate rights or interest to the domain name if it is composed by a common term.

5. Prepare all documentary evidence and a brief explanatory statement

Once you have filed the Complaint, it shall not be amended. Hence, all evidence has to be filed together with the complaint. You shall prepare and attach to the complaint the proof of: the ownership of the trademark on which the complaint is based (certificate of registration); the current use of the trademark (e.g. brochure, printout of the complainant's website or a declaration of such use); the data of the registrant (whois search); the infringing bad faith use of the domain name (screenshot of the website to which the domain resolves). Prepare a brief maximum 500-word statement to explain your claim.

6. Draft and submit your complaint in English

Complaint is always to be filed in English indepedently from the language of the registration agreement. Response can be filed in English or in the predominant language spoken in the registrant's country. Examiner will decide which is the appropriate language of the proceeding. If no response is filed by the registrant, the determination will be issued in English.

7. Verify that there is no other proceeding pending related to the domain name

URS can not be initiated if an UDRP  dispute or a court proceeding has been introduced and still not concluded concerning the same domain name.

8. Verify the URS decisions rendered is similar cases

All decisions issued in the URS disputes are published on the dispute resolution provider's website. Reasoning of decisions in cases similar to yours might be useful in drafting your claim.

9. After submission check regularly the status of the dispute

The average length of the procedure is 21 days from the filing of the Complaint until the issuance of the decision.

The decision shall be implemented by the registry who operates the new gTLD within 24 hours of the receipt of the notice and instructions from the dispute resolution provider.

10. Last but not least, choose an ICANN approved dispute resolution provider

MFSD, with almost 20 years of experience in intellectual property dispute resolution, was approved as the third worldwide URS dispute resolution service provider in December 2015.

MFSD has a list of highly-qualified and globally-diversified list of neutrals, providing URS dispute resolution service in 15 different languages.

Cost of proceeding is very competitive.

For further details

  • visit our online dispute management platform dedicated to URS: URS.MFSD.IT
  • call + 39 02 82 913 645


Ivett Paulovics - URS Case Manager

Sources 

The Fact Sheet Domain Names and Cybersquatting published by European IPR Helpdesk aims to present the issue of domain name ownership and registration, their relationship to trade marks as well as explaining the issue of cybersquatting and the available dispute resolution mechanisms that may be used by SMEs to protect their businesses online (November 2017).

The Uniform Rapid Suspension System Procedure - A Right Protection Mechanism in the Expanded Domain Name Landscape, Ivett Paulovics, Inter Pacific Bar Association Legal Update, December 2017.

Videos

Left. Domain Name Dispute Case Study: URS Now Applies to .org Domain Names, Domain name attorney Doug Isenberg of GigaLaw discusses an update to his masterclass video about the Uniform Rapid Suspension System (URS), noting that this policy now applies to .org domain names, allowing a trademark owner to get a .org domain name temporarily suspended. Copyright © 2021 Douglas M. Isenberg.

Right. New Domains. New Disputes. New Resolutions. Commercial over Uniform Rapid Suspension System (URS) on generic domains (MFSD, 2016). 

PDF
Ipbajournaldec2017
358 KB
PDF
Domainsfactsheeteuiprhelpdesk
474 KB
[youtube=https://www.youtube.com/watch?v=udjBIdhI2HY]
[youtube=https://www.youtube.com/watch?v=4LCcZElZ6z0]
Home
About Us +
Mediation +
Cooling Off +
.it Domain Disputes +
New gTLDs - URS
Academy +
News
Contact
Registration Form
Privacy
Cookie
Complaints
COOLING OFF
Euro net Mediation Center
European Justice