November 09, 2021

Don’t stroll into a URS unprepared!

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The Uniform Rapid Suspension System or URS is intended to be a relatively cheap method of suspending a domain that is identical or confusingly similar to a trade mark.

It is mostly used when a domain directs to a website that cannot be taken down for a variety of different reasons, such as the host provider and/or registrar are not cooperating with a takedown request.

The bugaboo.vip URS decision is an example of how this simple procedure can backfire.

We assume Bugaboo the pram (stroller) manufacturer did not appreciate its trade mark being redirected to a fraudulent website purporting to sell their products and those of competitors, which now redirects to a KRUPS coffee machine website (which also appears to be fraudulent).

Original Fraudulent Redirect

bugaboo

The registrar Namecheap (well-known for providing a safe haven to domain squatters and fraudsters) probably binned the take down requests leaving Cloudfare to pass the buck with their usual statement that they are a mere conduit and do not host the content.

The next step in the takedown armoury is the URS.

There is no need to discuss the elements that need to be proved as Bugaboo and their lawyers strolled passed and ignored three sections of the URS listed below.

Section 8.2 of the URS states, “The burden of proof shall be clear and convincing evidence.”
Section 8.3 in plain English further states “This means that the Complainant must present adequate evidence to substantiate its trademark rights in the domain name (e.g., evidence of a trademark registration and evidence that the domain name was registered and is being used in bad faith in violation of the URS).”
Section 8.6 restates the evidence requirement “To restate in another way, if the Examiner finds that all three standards are satisfied by clear and convincing evidence and that there is no genuine contestable issue, then the Examiner shall issue a Determination in favor of the Complainant. If the Examiner finds that any of the standards have not been satisfied, then the Examiner shall deny the relief requested, thereby terminating the URS proceeding without prejudice to the Complainant to proceed with an action in court of competent jurisdiction or under the UDRP.”

The common theme is EVIDENCE. Bugaboo and its lawyers did not submit documentary evidence issued by a governmental trademark authority of any trademark registration.  This omission is fatal to its case.  It has failed to prove the first required element stated above, and its Complaint must therefore be dismissed.”

We have, over the years, written several articles discussing how important evidence is for supporting domain complaints and that they should not be overlooked merely because the process seems simple and straight forward.

Build your case around the evidence and if there is no evidence, you have no case.

Lexsynergy has a 100% success rate in domain complaints. Reach out if you need assistance in recovering domains.