URS Individual Proposal #16 The URS should allow for additional remedies such as a “right of first refusal” to register the domain name in question once the suspension period ends or the ability of the Complainant to obtain additional extensions of the suspension period. |
Context:
Rationale provided by the Proponent: One reason the URS has not met with wide adoption by brand owners is the limited remedies available. It would likely increase URS utility if prevailing Complainants had the opportunity to securely take possession of the disputed domain name(s) without the delay and risk of waiting for a suspended domain to expire and then placing a back order or otherwise attempting to acquire it in the marketplace once the suspension period ended. Such enhanced remedies could include a right of first refusal upon expiration of a suspended domain name but they could also provide for the ability of a losing Respondent to voluntarily transfer a suspended domain to the Complainant upon a negotiated settlement prior to the domain’s expiration. Also, a successful Complainant could be given the option of maintaining and extending the suspension for additional periods of time, potentially subject to payment of a reasonable extension fee in each instance.
The basis for the URS is rapid suspension of names that clearly infringe the rights of a trademark owner. However, given the timeframe for the action, such names can rapidly be re-registered by the same, or another, infringer. A longer suspension period would prevent opportunistic infringers from simply monitoring URS cases and immediately registering such names when they are no longer in suspension: the simple fact that there has been a URS case will be regarded as evidence that this name is important to the right owner. This is a consumer protection issue: end-users must not be duped into believing that the name will resolve to the right holder’s site.
Working Group Deliberation: There was general support in the Working Group for publishing this proposal in the Initial Report to seek public comment[1], but some Working Group members expressed opposition to its substance.
Working Group Question for Public Comment: The Working Group seeks public comment on the feasibility of implementing the proposal.
[1] The Working Group confirmed that URS Individual Proposal #16 incorporated and superseded URS Individual Proposal #17, of which its rationale applied to URS Individual Proposal #16. The Working Group decided not to publish URS Individual Proposal #17 in this Initial Report for public comment, but the link to all submitted URS Individual Proposals can be found in the “Annex C - Working Group Documents” section.
