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CHECKLIST

1

ENSURE THE SCOPE

The URS applies to all new gTLDs (e.g. .store, .shop, .xyz and also Internationalized Domain Names extensions .online in Cyrillic letters), so called legacy domain (e.g. .org) and to certain ccTLDs that has opted for the URS as an applicable domain name dispute resolution proceeding (e.g. .pw)

2

ENSURE THE INTEREST

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 THE TRADEMARK

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, trade names or other distinctive 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

CHECK THE DOMAIN DISPUTED

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 dictionary, generic or common term.

5

PREPARE DOCUMENTS

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 IN ENGLISH

Complaint is always to be filed in English. No matter  what the language of the registration agreement is. 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

NO PENDING PROCEEDINGS

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

CHECK PRECEDENTS

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

CHECK STATUS

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

CHOOSE THE PROVIDER

MFSD, with over 20 years of experience in intellectual property dispute resolution, was approved by ICANN as the third worldwide URS dispute resolution service provider anf the only one in Europe since 2015.

MFSD has:

  • a list of highly-qualified and globally-diversified neutrals, providing URS dispute resolution service in various languages

  • a dedicated online case management system and case manager

  • handled over 165 cases

  • suspended over 250 domains

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