This week in IP Enforcement Focus, we cover the URS Procedure, more fully known as the Uniform Rapid Suspension System – a rights protection mechanism aimed at tackling clear cases of cybersquatting in the new generic top-level domain space (new gTLD).
Designed to complement the UDRP (Uniform Domain Name Dispute Resolution Policy) it is faster and more cost-effective than the UDRP, but a number of the 600 cases to date have shown that the result may not be as expected and being fast and cheap does not necessarily mean “easy win” for a complainant.
The ‘.marketing’ gTLD is one of the many new gTLDs launched over the past couple of years by the Internet Corporation for Assigned Names and Numbers (ICANN). It is intended to provide a space dedicated to marketing and advertising services.
A recent case saw the panel deny the suspension of a domain name under this new gTLD for failure to prove by clear and convincing evidence that the domain name had been registered in bad faith, given the descriptive nature of the term, which was commonly used in the marketing sector.
In the case at hand, the complainant was Madwire, LLC, a company based in Colorado, United States, operating in the field of marketing and owner of a US trademark registration for MARKETING 360, used in connection with advertising and marketing services and web design services (Classes 35 and 42, respectively). The respondent was Digital Privacy Corporation of Vista, California, United States, a privacy protection service. The underlying registrant, however, appeared to be an individual based in Dubai, United Arab Emirates, also operating in the field of marketing. No other details about the respondent were known. The disputed domain name was <360.marketing> and it was being used to point to a website offering online marketing services. Both parties argued their case in July 2016. Under the URS, to obtain the suspension of a domain name, a complainant must prove each of the following elements:
- The domain name is identical or confusingly similar to a word mark:
- for which the complainant holds a valid national or regional registration and that is in current use;
- that has been validated through court proceedings; or
- that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed;
- The registrant has no rights or legitimate interests in the domain name; and
- The domain was registered and is being used in bad faith.
As far as the first requirement under the URS is concerned, the complainant argued that the domain name was confusingly similar to its trademark registration whilst the respondent, argued that the domain name was a commonly used term in marketing. The examiner agreed with the respondent that the domain name consisted of a commonly used term in marketing, but nevertheless found that the domain name was similar to the complainant’s United States trademark and that and that whilst the risk of confusion was very limited it could not be ruled out entirely. Turning to the second requirement, the complainant argued that the respondent had no prior rights relevant to the domain name and since the respondent furnished no evidence and made no submissions in this regard, the panel found that the respondent had no rights or legitimate interest.
All looked good for the complainant therefore, until the third element was considered. The URS, like the UDRP, requires a complainant to demonstrate both registration and use of a domain name in bad faith.
Here, the difference between the URS and the UDRP was pivotal since the URS imposes a heavier burden of proof, with the standard being “clear and convincing evidence” as opposed to the traditional “preponderance of the evidence” (or “on balance”) required by the UDRP. The panel found that there was no clear and convincing evidence that the respondent had registered the domain name in bad faith and proceeded to deny the complainant’s request to order the suspension of the domain name.
This decision underlines how, although the URS may be a quick and cost-effective mechanism for trademark holders to tackle infringing domain names, it is intended only for clear cybersquatting cases. Complainants should therefore carefully consider the weaknesses of their case and any potential defences of the registrant before deciding to file a complaint under the URS, even if they have a registered trademark which is almost identical to the domain name in question.
The URS procedure is due for a review by ICANN in the Spring of 2017.