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Using the URS as a Preliminary Injunction for Domain Name Disputes

As I’ve written before, the Uniform Rapid Suspension System (URS)—the domain name dispute policy applicable to the new generic top-level domains (gTLDs)—is just not catching on. Whether because of its limited suspension remedy, high burden of proof or other reasons, the URS remains unpopular among trademark owners.

However, there’s one interesting use to which the URS can be put: as a variation of a preliminary injunction.

While a true preliminary injunction is typically a court order to preserve the status quo, sometimes an injunction is used as a stop-gap measure to prevent a party from suffering immediate irreparable harm unless certain action is taken. In court, a preliminary injunction precedes further judicial action in the same proceeding.

While the URS doesn’t strictly fit this definition, it can be used to the same effect.

Here’s how: While the URS (which allows a trademark owner to get a domain name temporarily suspended) and the Uniform Domain Name Dispute Resolution Policy (UDRP) (which allows a trademark owner to get a domain name transferred to itself) are typically thought of as separate (“either-or”) legal remedies, they can be used in conjunction.

Specifically, paragraph 13 of the URS states:

The URS Determination shall not preclude any other remedies available to the appellant, such as UDRP (if appellant is the Complainant), or other remedies as may be available in a court of competent jurisdiction. A URS Determination for or against a party shall not prejudice the party in UDRP or any other proceedings.

As a result, a trademark owner can take advantage of both the quick suspension remedy of the URS (determinations are typically issued within about 17 days) as well as the long-term transfer remedy of the UDRP (which usually requires about two months to reach a decision—plus an additional 10 business days before implementation). To do so, a trademark owner could file a URS complaint followed by a UDRP complaint after the disputed domain name has been suspended.

The result (assuming the trademark owner is successful in both proceedings): The disputed domain name is quickly suspended, preventing any further harm, and then later transferred, allowing the trademark owner to use the domain name as it wants or at least to permanently keep anyone else from using it.

At least one trademark owner who pursued this approach has found success. Yves Saint Laurent won a URS determination for the domain names <saintlaurent.club> and <ysl.club> on July 22, 2014, followed by a UDRP decision for the same domain names, against the same registrant, on April 18, 2016.

Importantly, the panel in the UDRP case had no problem in finding bad faith, even though at the time of the UDRP proceeding, the domain names were still associated with suspension pages (as a result of the earlier URS determination). Specifically, the UDRP panel wrote:

The Panel notes for completeness that it does not consider that the web pages associated with each of the disputed domain names in their suspended incarnation, each stating that the disputed domain name has been taken down pursuant to the URS, constitute any “use” by the Respondent which should have any effect upon the analysis of whether such domain name is being used in bad faith in terms of the UDRP. In the Panel’s opinion, it is the Respondent’s use prior to any such suspension that is the focus of this question, namely during the period when the Respondent was in a position to exercise control over the disputed domain names.

Accordingly, the domain names that were previously suspended under the URS were ordered transferred to Yves Saint Laurent under the UDRP. Although Yves Saint Laurent apparently waited about 20 months after the URS determination before filing its UDRP complaint (while the domain names were still suspended), there’s no reason why a trademark owner couldn’t proceed directly to the UDRP after (or even before) receiving a URS determination.

Given the minimal cost associated with a URS proceeding (the Forum’s filing fees start at only $375), the one-two punch of the URS-UDRP approach may be something that more trademark owners should consider.

By Doug Isenberg, Attorney & Founder of The GigaLaw Firm

Learn more by visiting The GigaLaw Firm website. Doug Isenberg also maintains a blog here.

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