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The Uniform Rapid Suspension system is a fast, cost-efficient legal mechanism for brand owners to fight cybersquatting, and it has a formal appeal process. Stuart Fuller of NetNames reports on its performance so far.
One of the major concerns for the domain name industry for many years has been cybersquatting. Despite their best efforts, many brand owners have found their trademarks and key brands being infringed in domain names, and then they have had to go to great lengths and cost to recover not only their intellectual property but also in some instances rightful web traffic, customers, revenues and reputation.
The ICANN Uniform Domain-Name Dispute-Resolution Policy (UDRP) is a well-worn path, and while it is effective, it is also costly and time-consuming, meaning that a brand owner often has to cede to the demands of the IP infringer to get its rightful digital property back, rather than following the legal path.
The introduction in 2013 of the mandatory Uniform Rapid Suspension (URS) system for all new generic top-level domains (gTLDs) was initially seen as a positive enhancement to the armour of the IP community. It was designed as a fast, cost-efficient legal mechanism to ensure that brand owners can remove IP infringements before any reputational damage can be done. On the other side, it was seen as a system that had a formal appeal process, meaning that it wasn’t simply a kangaroo court, as the existing UDRP process can sometimes appear to be.
The URS was designed to address clear cases of trademark abuse. However, the main complication from the outset was that many of the new gTLDs, when paired with trademarks, could be deemed to have other meanings—for instance, finn.sexy or branson.guru. The burden of proof was set high, with three main considerations needing to be proved before a domain name could be considered for suspension. These are:
• The registered domain name is identical or confusingly similar to a word mark;
• The registrant has no legitimate right to or interest in the domain name; and
• The domain name was registered and is being used in bad faith.
The final point is an interesting one. In the case of branson.guru, the URS examiner deemed that the complainant, Richard Branson, had not established that the domain name was actually being used in bad faith. While the domain name had been registered by a third party and it was identical to Branson’s name, the fact that it was resolving to a parked page containing no reference to Branson or any of his associated companies, nor causing any material damage, meant that the third element could not be proved.
While the URS was introduced for the new gTLD programme, the first case was actually brought in the TLD space of .pw—the country-code TLD for the Pacific island of Palau—in August 2013 by Facebook, which complained about facebook.pw. The domain name industry watched on with interest as the National Arbitration Forum (NAF) ruled in favour of the social media company in just a few days. While there may have been some high-fiving in Menlo Park, California, the ruling meant that the domain name was only suspended and Facebook would still have to ensure it was at the front of the queue to register the name when it was released back on to the market after expiry.
The first URS case featuring a new gTLD was brought by Canyon Bicycles over the domain canyon.bike, which had been registered under a proxy service. The .bike domain was one of the first gTLDs launched in the programme and the registration of the canyon.bike domain name took place in the ‘early access phase’, a landrush-type phase introduced by domain name registry Donuts, during which the cost of registration fell every day over the course of six days.
The consideration paid by the registrant to the domain name was high but risky. When the case was brought before the URS panel shortly after this registration, it determined that the .bike gTLD actually strengthened the trademark owner’s claim.
Since then, the NAF has ruled in the majority of the URS cases before it—more than 200 at the time of writing and growing every week. The most common TLDs that have been brought in front of its ruling panels have been .club (30 cases), .email (23 cases) and .guru (10 cases). As of January 31, 2015, 198 cases (77%) have been decided in favour of IP owner, while 14 (5%) cases are still pending a decision.
"In the case of branson.guru, the URS examiner deemed that the complainant, Richard Branson, had not established that the domain name was actually being used in bad faith."
Virgin has won all 18 cases it has filed concerning names that use the ‘Virgin’ trademark, although it did suffer a potentially embarrassing PR episode in trying to have the domain names ‘richardbranson.holdings’ and ‘richardbranson.ventures’ suspended under the URS process, only then to withdraw the case.
So far 25 cases (9%) have been withdrawn, normally pointing to the fact that a sternly-worded letter from the trademark owner to the registrant did the trick. In these cases, there is normally a very clear case of registration in bad faith.
Additionally, 21 decisions (8%) have been made in favour of the initial domain name registrant. An interesting URS decision was in the case of porsche.social, where the panel deemed that while the registration was in clear breach of a trademark, the website wasn’t being used in bad faith (it was for a fan site for the German car brand) and had clear wording that said it wasn’t associated in any way with the Porsche brand. Similar decisions have been made in the case of nissan.parts and astonmartin.parts.
Unlike in the UDRP, where the decisions passed down by the World Intellectual Property Organization’s panellists are in most cases binding unless the brand files a lawsuit in a local court, the URS allows for the right to appeal on either side. Aeropostale, the US clothes retailer, was believed to be the first party to win a URS case on appeal when it had the initial decision on aeropostale.uno overturned on the basis that, despite not owning an exact-match trademark, the domain name was confusingly similar.
Lufthansa is another big global brand that seems to be using the URS as a defensive strategy, having filed 17 cases so far. Some of the allegedly infringing domain names it has pursued are clearly aligned to its business, such as lufthansa.flights and lufthansa.careers, yet it hasn’t implemented a strategy that places any value on owning these domain names. There can be few more relevant keywords to an airline than the word ‘flights’ and a simple Google search combing the words ‘Lufthansa’ and ‘flights’ brings up more than 55,000 results.
Whether the URS will be a deterrent for IP infringers is not yet clear. The URS panels do take into consideration the ‘character’ of registrants, with instances already seen of their previous registrations being given weight when a case is heard. One such registrant has already had six cases ruled against him, further eroding any defensive claim he could make in the future, as well as leaving him out of pocket.
While the URS has provided some reassurance to trademark owners that potentially damaging third party domain name registrations can be swiftly removed, it would be very foolhardy for any brand owner to rely on the new mechanism as a core part of a domain name or brand protection strategy.
With the only remedy available being to remove the offending name from the world wide web until the registration expires, brands would still have to register the name themselves to ensure they are not infringed again, meaning it is simply worth avoiding the hassle and cost by proactively registering the domain names in the first place.
Alternatively, more than half of the ‘open’ gTLDs are covered by rights protection mechanisms such as Donuts’s Domains Protected Marks List, which offers a very comprehensive blocking option for trademarks.
The URS will continue to be a good tool for brand and trademark owners to have in their back pocket. The vision of ICANN to create an alternative dispute mechanism to the UDRP that works in the favour of the infringed party has been realised. It is not feasible to expect organisations to make registrations in every sunrise period of every new gTLD. Companies should recognise the TLDs that not only strengthen their brand in terms of keyword search and therefore offer new opportunities for their digital footprint, but also those that could have the most damaging impact on their brand should they fall into the hands of a cybersquatter.
Stuart Fuller is director of commercial operations at NetNames. He has experience in brand protection, both in retail and corporate re-sale markets. He can be contacted at: email@example.com.
UDRP, gTLDs, domain name disputes, trademark, URS