INTA 2013: NAF provides .xxx figures

07-05-2013

IP owners have lost only one of 40 .xxx cybersquatting disputes handled by the National Arbitration Forum (NAF), according to its legal counsel Kristine Dorrain.

Dorrain, who was speaking at the INTA annual meeting in Dallas, was referring to Rapid Evaluation Service complaints (RES), which only cover the adult-orientated .xxx domain.

Of the 39 successful complaints, 37 listed trademark infringement concerns, while three had worries about impersonation. One case failed before being assessed because it was not strong enough.

“People have been submitting really clear cut cases,” Dorrain said. “The RES has gone remarkably smoothly.”

The RES is similar to the Uniform Rapid Suspension System (URS), which protects rights under the new generic top-level domain (gTLD) programme, as they both seek to quickly address clear-cut cybersquatting cases. Dorrain said similarities between the systems means that the NAF, one of two URS providers, is basing its URS systems on the RES.

The NAF is planning to collect data on known cybersquatters, she added, so that URS administrators have an up-to-date list of bad actors before handling complaints.

Dorrain was speaking in a panel session with, among others, John Berryhill, a single IP practitioner who regularly represents alleged cybersquatters.

Berryhill said the URS may lead his clients to resort to litigation more, as existing three-member Uniform Domain Name Dispute Policy (UDRP) panels, which have more “eyeballs on the case”, can be preferable to one-member URS panels.

He then raised concerns about reverse domain name hijacking, which refers to false cybersquatting claims brought by trademark owners.

“Some brand owners are not well reflected in their UDRP filings. There are a lot of dumb UDRP claims. There’s lots of exaggerating things – I can’t believe the extent to which [this happens]. Stick to the facts and restrain on the puffery. UDRP panellists are not idiots,” Berryhill said.  

He added: “Some UDRP panellists say ‘why waste my time?’ dealing with reverse domain name hijacking. That is an insult to the panellists and the integrity of the process.”

Berryhill noted that reverse domain name hijacking becomes important in the URS context because the system seeks to limit abusive complaints.

The discussion turned to the link between the URS and the Trademark Clearinghouse, a central repository of validated marks that helps to protect rights under the new gTLD programme.

Dorrain confirmed that a URS complainant can provide evidence of a Clearinghouse validated mark when filing a complaint, but that examiners will still be required to verify a trademark themselves.  

Berryhill said while there is an opportunity “to mesh the URS and the Clearinghouse, the problem – one of the places where the gTLD process has gone off the rails – is that the TMCH is not supposed to define policy”.

This article was first published on 08 May 2013 in World IP Review

inta 2013, naf, urs, res, .xxx

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