Facebook successfully suspends facebok.pw domain name in first URS determination
We have previously reported that a new Uniform Rapid Suspension System (URS) was proposed to assist brand owners police their trade marks in the wake of the new generic top level domains (gTLD). The URS has since been implemented and Facebook was recently successful in the first determination to be made under the URS, resulting in the suspension of the domain name . With the determination issued in just over one month after submitting the complaint, the URS is a quick and efficient avenue for brand owners to address cyber squatting and infringements in the new gTLDs.
What is the Uniform Rapid Suspension System (URS)?
The URS is designed to provide a fast and cost effective avenue to stop clear-cut infringing domain names from operating. It is administered by approved providers and is designed to complement rather than replace the existing Uniform Domain-Name Dispute-Resolution Policy (UDRP).
Notably, a complaint under the URS can only be made if the domain name is registered in a new gTLD.
What must be proved in a Uniform Rapid Suspension System (URS) claim?
In order to succeed under an URS claim, the Complainant must prove with clear and convincing evidence that:
- the domain name is identical or confusingly similar to a trade mark in which the Complainant has rights;
- the Respondent has no legitimate interest in respect of the domain name; and
- the domain was registered and is being used in bad faith.
If there are any genuine contestable issues relating to any of the above, then the claim will fail as there must be clear and convincing evidence. However, this will not impact on the trade mark owner’s ability to seek recourse via appeal, the UDRP or the courts.
Why did Facebook win?
In Facebook’s case, the decision maker determined that:
- the only difference between the domain name and the FACEBOOK mark is the absence of one letter “o”, therefore, the domain name is confusingly similar to the FACEBOOK mark
- the top level domain is irrelevant in assessing identity or confusing similarity
- there was no evidence that the Respondent had rights or legitimate interests in the domain name
- the domain name was registered and is being used in bad faith because:
- it was registered some nine years after the FACEBOOK marks were first used and gained fame
- there was evidence of a pattern of illegitimate use of trade marks in domain names by the Respondent
- the domain name was used to attract users to its website containing links which appeared to generate click-through fees for the Respondent’s commercial gain
The facebok.pw domain name is now suspended.
How long does the Uniform Rapid Suspension System (URS) process take?
Determinations can be issued in approximately one month from the date the complaint is filed.
For example, Facebook submitted its complaint on 21 August 2013 and a determination issued on 27 September 2013. In this time, the Complaint underwent a formalities check, the domain at issue was “locked” so that it could not be transferred or deleted, Notice was provided to the Respondent that it has 14 days to file a Response, and a determination issued after the 14 day Response period ended.
What remedies are available to trade mark owners under the Uniform Rapid Suspension System (URS)?
The only remedy available under the URS is suspension of the domain name until the end of the registration period. Unlike remedies available under the UDRP, the domain cannot be cancelled or transferred to the trade mark owner. Trade mark owners may therefore need to keep a careful eye on when suspended registrations lapse, otherwise, another entity may register it.
Extensions where no Response is filed
Trade mark owners should note that while the URS is designed to be efficient, in cases such as Facebook’s where the Registrant fails to file a Response, the process does not necessarily end when the determination is made.
If the Respondent does not file a Response in the initial 14 day Response period, the Respondent can request an extension of up to 7 days even if a determination is already made so long as the request is made within 30 days from the date of the determination.
Additionally, the Respondent can also request the matter to be reviewed afresh by filing a Response within 6 months from the date the determination is made. This 6 month period is extendable by a further 6 months upon request. Once the Response is filed, the matter will be decided as if it was filed on time.
How are Uniform Rapid Suspension System (URS) determinations appealed?
Unlike the UDRP, it is possible to appeal a URS decision to an Appeal Panel of a URS Provider within 14 days of a determination. Appeals are heard afresh based on the existing record with a limited right to introduce new evidence.
Uniform Rapid Suspension System (URS) or the Uniform Domain-Name Dispute-Resolution Policy (UDRP)?
Which dispute resolution procedure trade mark owners adopt will depend on individual circumstances, their goals and their broader brand protection strategy. The table below sets out just some of the differences:
*subject to extensions requested by parties and workload of Providers
Lessons for trade mark owners
Trade mark owners now have another avenue under the URS to stop unauthorised use of their trade marks in a domain name in a fairly cost effective and efficient manner. However, trade mark owners need to weigh up the potential gains in cost and time with a more limited range of remedies available and potential for delay.