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Facebook And IBM Utilize The New Uniform Rapid Suspension System

The roll out of the new Generic Top-Level Domain (gTLD) program brings with it a new domain name dispute procedure. This procedure is known as the Uniform Rapid Suspension System (URS). It is compulsory that each new gTLD operator have a domain name dispute system available. The URS is specifically designed to quickly resolve well-defined cases of cybersquatting. The URS is also aimed at being a less expensive alternative to the existing UDRP (Uniform Domain-Name Dispute Resolution Policy). See our website page entitled Domain Name Disputes, where we discuss filing a UDRP Complaint.

There are some additional differences between the two systems. For example, the URS requires a heavier burden of proof by mandating that the elements must be demonstrated by clear and convincing evidence. Moreover, the remedy available varies under the two systems. Under the UDRP a complainant may request to have the domain cancelled or transferred to it, while under the URS system a complainant may only request that the domain be suspended for the life of the registration.  The URS system is being monitored to determine if once the suspension resolves will other cybersquatters register the same domain and will the cycle repeat. If this occurs, it will be problematic and will interfere with the objective of a speedy resolution. Moreover, further bad faith registrations of the same domain will show that the URS will not be an effective long term strategy.

The first complaint filed with the URS was filed by Facebook on August 21, 2013. The case commenced on September 11, 2013. The dispute involved the domain facebok.pw. The registrant did not respond to the complaint. Facebook was able to prove by clear and convincing evidence that the respondent was a serial cybersquatter. The decision was rendered on September 27, 2013 and Facebook prevailed.

Under both the URS and the UDRP the same three elements must be proven:

1)     That the domain name registered by the respondent is identical to or confusingly similar to a trademark in which the complainant has legal rights;

2)     The respondent has no legitimate rights or interests in the domain name; and

3)     The domain name has been registered and used in bad faith.

IBM’s  complaint was filed with the URS on February 5, 2014. The dispute centered around the domains ibm.guru and ibm.ventures. IBM registered its trademarks with the Trademark Clearinghouse. The Clearinghouse was created to protect brand owners. If a trademark owner registers its trademark with the Clearinghouse the trademark owner will receive a notice when an application is made with a registry that includes their trademark in the domain name. Also, the party seeking to apply for the domain name will be notified of the conflict with your trademark and of your prior rights. If this warning is disregarded, then the trademark owner is advised that the domain name applicant is moving forward with the domain name application inclusive of your trademark. When IBM was informed by the Clearinghouse that the warning was ignored, it filed a complaint with the URS.

These URS matters are decided by the National Arbitration Forum. IBM prevailed in this matter because the Examiner was convinced that the domain names ibm.guru and ibm.ventures were confusingly similar to the mark IBM.  Moreover, the registrant failed to prove he had any legitimate interests or rights in the domain names. Lastly, the Examiner concluded that the domains were registered and used in bad faith. The registrant redirected the two domains to IBM owned and operated websites. The Examiner perceived this to be an acknowledgment that the domains could only refer to the complainant. The decision was rendered on February 12, 2014. Both of these initial cases were clear cut cases of cybersquatting and therefore, the URS worked as anticipated, quickly and efficiently to produce a remedy. If you have questions, pertaining to the URS system or in connection with the new gTLD program, please feel free to contact our offices and speak with one of our New York  trademark lawyers.