Guess who owns Netflix.news and Netflix.website – clue: definitely not Netflix

Attempt to snatch domains ends in weird twist

What does this all mean?

The decisions will infuriate trademark holders, who specifically designed the URS as a faster and cheaper way to stop their trademarks from being infringed.

The previous – and ongoing – system is called the Uniform Dispute Resolution Policy (UDRP). That system actively hands over control of the domain if the complainant wins, whereas the URS simply suspends the domain.

But UDRP is more expensive (starting at $1,500) and it takes longer (around 45 days as opposed to 21 days for the URS). Plus companies end up with domain names that they don't really want and they then have to pay to renew every year.

In order to get faster and cheaper resolution, the URS does away with some of the depth of review of the UDRP, adopts a standard of review of "clear and convincing evidence," and requires that three out of three factors be found clearly in the complainant's favor: that the domain is "identical or confusingly similar" to a trademark; that the registrant "has no legitimate right or interest to the domain name"; and that the name "was registered and is being used in bad faith."

Regardless, many companies have started using the URS instead of the UDRP because the end result is almost always the same. Netflix, for example, used the UDRP process through the National Arbitration Forum six times from 2009 to 2013, but once the URS process started, it has exclusively used URS five times in the past two years. And had won them all until these two decisions.

In-built bias?

A decision against trademark holders is rare except in the most exceptional circumstances. Panelists from the four arbitration bodies accredited by ICANN to hear out URS and UDRP cases are often intellectual property lawyers. They are selected according to opaque criteria, and studies have shown that panelists who more frequently find in the trademark holder's favor are chosen to hear far more cases.

The fact that the arbitration bodies benefit financially from finding in the trademark holders' favor through their fees has led to a long-standing criticism of the process that it is systemically biased against respondents.

So why the decisions against Netflix? And why the sudden provision of benefit of the doubt to respondents? Our guess would be that David Steele doesn't like seeing companies use the URS as a de facto UDRP and feels that he needs to actually apply the different wording contained in the URS as a way to differentiate the two processes.

Of course there could be another factor: panelists get paid significantly more for a UDRP decision than a URS decision, and they both take roughly the same amount of time to work through. ®