Facebook wins first URS case

28-10-2013

Facebook wins first URS case

Social network Facebook has won the first ever resolved case under the Uniform Rapid Suspension System (URS).

The URS, designed especially for the new generic top-level domains (gTLDs), is meant to tackle clear-cut cybersquatting cases more quickly than existing systems.

Facebook complained about the domain “facebok.pw” in August, before the case began on September 11.

The site was used to generate click-through revenue for the registrant, who did not respond to the complaint and had a history cybersquatting.

Like in Uniform Domain Name Dispute Resolution (UDRP) cases, a domain can be transferred only if the domain is identical or confusingly similar to a trademark; the registrant has no legitimate rights or interests in the domain; and if it was registered and used in bad faith.

After reviewing Facebook’s complaint, examiner Darryl Wilson found on September 27 that the company had demonstrated all three elements by showing “clear and convincing evidence”.

The domain will be suspended until its registration period elapses.

David Taylor, partner at Hogan Lovells LLP who represented Facebook in the case, said it was “great to finally see the first URS complaint and decision in action".

He added, however, that the URS may not be appropriate in all circumstances – and should remain as a complement to the UDRP. 

"The URS is designed to be lighter than the UDRP, but the built-in safeguards for registrants, if misused, could kill the potential gains in efficiency. This is because the URS can go into limbo if the respondent does not respond initially, since it can request a seven-day extension at any point in the 30 days following the default decision. 

“In addition, a de novo review can be requested at any time within six months after a decision, and a period of six months can be requested. This could make the process a long one indeed.”

Stéphanie Lacroix-Garrigues, corporate account manager at brand protection firm Keep Alert, said while the URS does offer brands advantages, the system can only suspend a domain for the remainder of its registration period.

“In a UDRP the trademark owner is able to select either the cancellation or the transfer of the domain name.”

She added: “We have to wait a few months to get statistics on the usage of domain names involved in URS after the end of the registration. If they are grabbed by another cybersquatter then the URS will not be useful in a long term strategy.”

The Facebook case comes after ICANN approved the first four gTLDs for delegation. Ratified on October 21, the domains are شبكة (Arabic for “web”), 游戏 (“game” in Chinese) and онлайн and сайт (“online” and “website” in Russian). 

This article was first published on 28 October 2013 in World IP Review

uniform rapid suspension system, facebook, udrp, gtlds

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