Articles Posted in Domain Names

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The Internet Corporation for Assigned Names and Numbers (“ICANN”) adopted The Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”) to resolve any disputes that arise between parties over the registration and use of domain names. The Policy was adopted by all ICANN accredited registrars and is incorporated by reference into your Registration Agreement with your registrar.

Since the wake of the new generic top-level domains (gTLD) another system has been put into place to facilitate trademark owners in policing their brands, the Uniform Rapid Suspension System (URS). As technology continues to grow and evolve we strive to keep pace and the URS was designed to provide a quick and cost effective procedure for clear-cut infringing domain names. It was designed to complement the existing UDRP. See our web page entitled: Update On The New Generic Top Level Domain Name Program for details regarding the new program.

To be successful and obtain relief under ICANN a complainant must prove all of the following prongs:

(i) that the domain name is registered by the respondent and is identical or confusingly similar to a trademark or service mark in which the complainant has rights: and

(ii) that the respondent has no legitimate interest in the domain name: and

(iii) the domain name has been registered and used in bad faith.

Regarding the first prong, its purpose is essentially to demonstrate standing. Typically, if you own a federally registered trademark or if you can prove you have common law rights and have acquired secondary meaning you will have standing to bring a UDRP complaint if the mark you have rights in is confusingly similar to the domain name registered by the respondent. To compare the domain name and trademark, there is a visual and aural comparison. Panels have agreed that if the dominant feature of the mark is similar or identical then adding a subsidiary word to the dominant element will not typically obviate the confusion for the purposes of the first prong requirement. If the complainant is asserting common law rights, it must show the mark has become a distinctive identifier associated with the goods or services and that secondary meaning has developed.

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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.

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In June 2011, ICANN (Internet Corporation for Assigned Names and Numbers) approved a plan to expand the number of new gTLDs (generic top-level domains) in the domain name system. A generic top-level domain is one of the categories of top-level domains maintained by the Internet Assigned Numbers Authority for use in the domain name system. Before the expansion, the core group of the generic top-level domains consisted of com, info, net, and org. The USPTO’s (The United States Patent & Trademark Office) policy had been that if a mark was comprised solely of a TLD for domain name registry services, the USPTO would refuse it on the basis that it could not function as a source indicator.

In June 2008, ICANN began considering a plan to expand the number of gTLDs in the domain name system.  In the next several months, there is an impending launch of 1,400 new gTLDs. Large companies such as McDonald’s Corporation and Nike have applied to operate new gTLDs based on their brand names (.MCDONALDS and .NIKE). These companies will have the responsibility of operating an online registry similar to .com or .org. Once the registries are open then third parties can register domain names in the new gTLD. Based on this expansion of the domain name system, the USPTO has decided to update its policy with respect to registering gTLDs as trademarks. With this new landscape in mind, possibly a new gTLD could serve a source identifying function. To properly distinguish between those gTLDs that can serve as source identifiers and those that can not, the USPTO will utilize the following evaluation system for review of trademark applications that are comprised of gTLDs and that file for protection for domain name registration or registry services.

Under those circumstances, the trademark applicant must be able to satisfy all three of the following criteria:

1) The applicant must prove that the proposed trademark will be perceived as a source identifier;

2) The applicant must demonstrate that it entered into a valid agreement with ICANN (a “Registry Agreement”); and

3) Show that the identified services will benefit others.

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