Here's another apparent limitation of the Uniform Rapid Suspension System (URS), the domain name dispute policy that applies to the new generic top-level domains (gTLDS): Proceedings are unlikely to unmask cybersquatters hiding behind privacy or proxy services.
Domain name registrants often use these privacy and proxy services to hide their identities when they register domain names. The services have legitimate uses but are controversial.
In proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP), the privacy veil is often lifted after a complaint has been filed, allowing a trademark owner to learn the identity of the so-called underlying registrant. Doing so can be beneficial to a trademark owner complainant, creating leverage and possibly leading to further evidence of bad faith or links to additional domain names.
At WIPO (the leading provider of UDRP services), a complainant is typically offered an opportunity to amend a complaint after the underlying registrant has been identified during the administrative compliance phase. Here's what WIPO's Overview 3.0 says (in part) on the topic:
When provided with underlying registrant information which differs from the respondent named in the complaint, a complainant may either add the disclosed underlying registrant as a co-respondent, or replace the originally named privacy or proxy service with the disclosed underlying registrant. In either event, complainants may also amend or supplement certain substantive aspects of the complaint (notably the second and third elements) in function of any such disclosure.
However, the URS — a quicker process that is "not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse" — does not provide for such amendments or supplements to a complaint. Indeed, the Forum (the leading provider of URS services) has a supplemental rule that expressly says: "The Complaint may not be amended at any time."
As a result, a review of URS cases shows that many identify the respondent only as a privacy or proxy service, such as the popular Domains By Proxy, because the underlying registrant is never disclosed during the course of a URS proceeding. Had the trademark owner elected instead to file a UDRP complaint for the same domain name (which is usually always an option, given that all new gTLDs are subject to both the URS as well as the UDRP), then the record might have identified the underlying registrant rather than the privacy or proxy service.
Of course, the URS continues to offer some advantages over the UDRP (notably quicker, less expensive resolutions), but the URS has long been criticized for its shortcomings (such as its ability only to suspend, not transfer, a disputed domain name).
Now, it seems that the URS has yet another shortcoming that trademark owners should consider when deciding whether to file a URS or UDRP complaint: If learning a hidden registrant's true identity is important, then a UDRP proceeding might be a better option than the URS.
Written by Doug Isenberg, Attorney & Founder of The GigaLaw Firm