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Recent Case Notes & Commentary


Case: Boucheron Holding SAS v. zhouhaotian et al

Claim Number: FA1605001676556

Case: Balenciaga SA v. justin justin

Claim Number: FA1605001676542

Two recent NAF decisions show that winning a URS case is not as easy as it looks.

Implemented by ICANN as a complement to the Uniform Domain-Name Dispute Resolution (UDRP), the Uniform Rapid Suspension System (URS) provides an alternative for the resolution of disputes over domain names issued under the new top level domains like .Melbourne, .XYZ or .club and many others. But only in straightforward cases of trademark infringement.  

In contrast to the UDRP, the single remedy available under the URS is the temporary suspension of a domain name for the remainder of registration period after the suspension. This outcome allows Respondents keep the domain name, but prevents them from using or renewing it. However, this does not mean the Complainant assumes ownership of the domain name.

The URS is appealing because it provides quicker, cheaper relief for rights holders in clear cases of trademark abuse.  These obvious advantages are counter-balanced by the higher burden of proof, which requires rights holders to demonstrate ‘clear and convincing evidence’ of trademark infringement. Accordingly, the URS process is most appropriate in  ‘slam-dunk’ cases of trademark abuse. 

These two cases are summary proceedings, but are interesting for a couple of details. Given the sparse content in the rulings, there is little reason to repeat the facts. On both occasions despite the Respondent failing to lodge a Response, each Complainant failed to satisfy the Examiner with clear and convincing evidence that the respective domain names were being used in bad faith.  The two complainants had thus each lost an undefended case.

In both Boucheron and Balenciaga, the Complainant had simply not put forward any facts to show bad faith use, but only that the domain name had never been used to show any material on a website.  

Discussion of Facts by the Examiner

The first point of discussion is the brevity of the rulings; about one page of discussion is devoted to each. Essentially, both decisions state each element of the URS and whether the Complainant was successful.

This lack of legal analysis in URS rulings is not limited to these particular cases. By design, URS decisions contain little or no examination of the legal issues. A chief criticism of the URS is that the proceedings offer little guidance to rights holders about how to prove the merits of their dispute. Rather than providing a beacon for future Complainants to assess the merits of their case, often URS decisions are simply open and shut.

As with any legal ruling, the facts of each case are fundamental to the decision making process. While conscious of the need to maintain the efficiency and lower the costs of the URS process, even a brief analysis of where the Complainant fell short would provide guidance to right holders in similar situations.

Although URS decisions are intended to be succinct, delving a little deeper into the facts would assist future Complainants in determining whether to pursue relief under the URS, saving both cost and time for all parties.

Submitting Sufficient Evidence in only 500 words. 

These cases can also be seen as a warning to people using the URS process that if  they do not have the evidence, they can lose even a summary process.  Just as in UDRP proceedings, bringing sufficient evidence to prove your claim is vital.  However, rights holders must bear in mind the URS imposes even heavier evidentiary requirements than the UDRP. 

Although a Complainant must satisfy the same three elements that have to be shown under the UDRP, the URS imposes the higher evidentiary burden of ‘clear and convincing evidence’. On top of this elevated standard of proof, Complainant’s are required to demonstrate the elements in a maximum of 500 words, leaving very little margin for error in their claims. Submitting the necessary clear and convincing evidence, in a mere 500 words, requires concise and unambiguous submissions.

This emphasis on speed and efficiency has been instigated as a limiting factor, restricting URS applications to only the most blatant of trademark infringements. So, despite the streamlined URS proceedings appearing on the surface to be a cheap quick fix, an objective analysis of the evidence is necessary. 

These two cases highlight the difficulties in bringing an action under the URS, even when it is a default determination and thus undefended. Prospective Complainants should ask themselves not only whether there is sufficient evidence to prove trademark infringement, but also whether they can convince Examiners of this, clearly and convincingly, in a one page and a bit submission.


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