The cancellation or transfer of a .us domain name can be accomplished through the use of the ICANN approved arbitration procedure or through civil litigation. There is also the rapid resolution arbitration procedure to seek suspension of the domain name.
The most common procedure for arbitration for a .us domain name is the .us Uniform Domain Name Dispute Resolution Policy (usDRP), which is similar to the Internet Corporation for Assigned Names and Numbers (ICANN) UDRP procedure applicable to .com and other domains and the .us Rapid Suspension procedure (usRS), which is similar to the ICANN Rapid Suspension procedure for .com and other domains. Both procedures are described below. There is also a procedure for challenging whether the registrant has the required US nexus to own a .us domain that is not believed to be widely used. It would be unusual to use any alternative arbitration procedure for a .us domain name unless it was done as part of an overall trademark dispute that was not limited solely to .us domain name issues or as part of court-ordered arbitration or mediation in ongoing litigation involving the domain name. Similarly, the most common forum for arbitration of a .com gTLD dispute is undoubtedly the ICANN-mandated UDRP proceeding.
usDRP arbitration proceedings to cancel or transfer a domain name
The current approved usDRP arbitration dispute providers for complaints under the usDRP procedure are the American Arbitration Association and the Forum (also known as the National Arbitration Forum).
Each provider follows the usDRP rules as well as its own supplemental rules.
In order to succeed in a usDRP proceeding, the complainant must introduce sufficient evidence to show that:
- the .us domain name is confusingly similar to a name or mark owned by the complainant or in which the complainant has rights;
- the .us registrant has no rights or legitimate interest in the domain name; and
- the .us domain name has been registered in bad faith or is being used in bad faith (current UDRP policy for .com domain names and other types of domain names requires proof of both use and registration in bad faith).
The remedies available pursuant to standard proceedings before an administrative panel are essentially limited to ordering either the cancellation of the domain name or the transfer of the domain name registration to the complainant. No monetary damages, costs or attorneys’ fees can be awarded. In the event that the complainant is successful, the relevant registrar will be directed, after allowing a brief period for the losing registrant to commence a civil action, to either cancel or transfer the domain name at issue. This should take place without any significant additional effort on behalf of the complainant. In the event that the registrant is successful, the status quo is maintained and no action need be taken until the complainant files a civil action in the United States.
There is no appeal process, but the losing party does have the option of commencing an action in federal court.
usRS arbitration proceedings to suspend a domain name
The usRS arbitration procedure is based on the rapid suspension procedure developed by ICANN for use with the new gTLDs introduced since 2012. The dispute resolution provider for usRS proceedings is the Forum. Under the rapid suspension procedure, which is designed for clear cases of infringement, the complainant must demonstrate ‘clear and convincing evidence’ establishing the three factors set forth above. In addition, the complainant in a usRS proceeding must establish that the mark being asserted is the subject of a valid national or regional registration owned by the complainant and is in current use or otherwise has been validated in a court proceeding or is protected by statute or treaty. In a rapid suspension proceeding the only remedy is suspension.
The usRS proceeding is intended to be a relatively quick and inexpensive means of addressing clear cases of infringing domain names. In order to succeed, the complainant must meet its burden of proof by clear and convincing evidence, which is a higher burden than required in a usDRP proceeding. If there are any material questions of fact regarding any of the elements, the complaint will be dismissed.
Unlike a usDRP proceeding, both parties have the right to seek a de novo appeal of a decision in a usRS proceeding. The appeal can be based on the existing record or, for an additional fee, based on new evidence provided the evidence clearly predates the filing of the original complaint. The usRS determination does not preclude any other remedies available to the appellant, such as a usDRP proceeding (if appellant is the complainant), or other remedies as may be available in a court of competent jurisdiction. A usRS determination for or against a party shall not prejudice the party in a usDRP proceeding or any other proceedings.
Both the usDRP and usRS procedures are typically conducted by the submission of arguments to an approved arbitrator or a panel of arbitrators. There is no discovery.
As noted, the administrative proceeding requirements do not prevent either party from submitting the dispute to a court of competent jurisdiction in the United States for independent resolution before such mandatory administrative proceeding is commenced, or after such proceeding is concluded.
Litigation involving .us domain names where the sole issue is the right to the .us domain name is relatively rare. However, there has been extensive litigation over the years involving .com domain names and, to a lesser extent, domain names in other gTLDs dating back to the early days of cybersquatting before the introduction of the ICANN arbitration procedures. Because cybersquatting of domain names does not always fall neatly within the definition of trademark infringement, some of the very early decisions extended theories of trademark dilution to address cybersquatting even in cases where the ‘fame’ of the mark at issue might not have been well established (in order to establish trademark dilution in the United States the mark at issue must be famous).
As cybersquatting became more prevalent, the US Congress adopted the Anti-Cybersquatting Consumer Protection Act to specifically address cybersquatting of domain names, including .com and .us domain names. The Anti-Cybersquatting Consumer Protection Act was incorporated into the provisions of the US Trademark Act and has been an effective tool to address cybersquatting of domain names.
Today most litigation involving domain names in the United States is primarily brought pursuant to the provisions of the Anti-Cybersquatting Consumer Protection Act. In cybersquatting cases, the plaintiff will often also assert other more traditional claims based on the trademark infringement or dilution provisions of the US Trademark Act. Virtually all actions involving trademark disputes in the United States, including domain name disputes, are commenced in a US federal district court of appropriate jurisdiction rather than in state courts.
There are no special rules of procedure or discovery applicable to domain name lawsuits in the United States. The same Federal Rules of Civil Procedure and Discovery that apply to other litigation in the federal courts apply to domain name litigation. It is possible, however, that because some domain name disputes may not be as fact-intensive as other traditional trademark disputes or other litigation there may be less discovery and the disputes may be more amenable to early resolution by summary judgment. It is also possible that these types of disputes may be more like to settle at an early stage if the domain name is not considered to be particularly valuable.
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