Opportunities and Procedures for Challenging New Top Level Domain Names

In fall 2013, the Internet Corporation for Assigned Names and Numbers (ICANN), the organization responsible for “running” the Internet, began introducing new generic top level domains (gTLDs) to the Internet’s authoritative database, known as the Root Zone. (For a full list of new gTLDs, click here.) While the goal of the new gTLDs was to enhance competition and consumer choice while enabling the benefits of innovation, ICANN was aware that new GTLDs would greatly open up additional potential for cybersquatting. To provide an additional rights protection mechanism, ICANN introduced the Uniform Rapid Suspension System (URS). It is designed to give trademark owners a faster, cheaper alternative to the Uniform Domain-Name Dispute-Resolution Policy (UDRP) for combating cybersquatting and other forms of trademark infringement by domain name registrants across new gTLDs.

The URS is specifically designed to quickly resolve well-defined cases of cybersquatting. To state a claim for relief, a URS complainant must show that:

• The registered domain name is identical or confusingly similar to a word mark for which the complainant holds a valid national or regional registration that is in current use; or that has been validated through a court proceeding; or is specifically protected by a statute or treaty in effect at the time the URS complaint is filed.
• The registrant has no legitimate right or interest to the domain name; and
• The domain was registered and is being used in bad faith.
• Proceedings are conducted by a single examiner who must determine by clear and convincing evidence that there is no genuine issue of material fact in order for the claimant to prevail. There is no discovery or hearing; evidence consists only of the materials submitted with the complaint and the response (if any), and those materials serve as the entire record for the basis of the examiner’s decision.

Since the introduction of these new gTLDs, and after the introduction of the URS, we are beginning to see the practical implications of these new policies and procedures.

The first complaint filed with the URS was filed by Facebook on August 21, 2013. The dispute involved the domain “facebok.pw.” In its decision, the panelist ignored the .pw top-level extension in determining confusing similarity, while also holding that the missing “o” was insufficient to mitigate confusion. The panelist found clear and convincing evidence of bad faith, based on the fact that the landing page contained “sponsored links” and that the respondent also had a “pattern of illegitimate domain name registrations” (mainly typos) involving others’ trademarks.

In a complaint filed by Banco Bilbao Vizcaya Argentaria, S.A. over the domain name bbva.guru, the panelist did not accept the respondent’s defense that he was developing an unrelated video game with the name BBVA. This suggests that mere claims of good faith without concrete evidence on the part of respondents might not be sufficient to avoid suspension.

However, in another complaint filed by Banco Bilbao Vizcaya Argentaria, S.A. involving the domain bbva.land, the respondent’s claim that the domain name was intended to facilitate the provision of agronomical engineering services to the towns of Bellreguart, Beniarjo, Villalonga and Almoines was deemed sufficient to avoid suspension, despite the seeming inconsistency with the bbva.guru decision.

These cases show that while the URS can be a useful protection mechanism, it may not always be the best option for a brand. Certain URS panels appear to be reluctant to suspend domain names in the face of plausible good faith, even if uncorroborated by concrete evidence. In addition the extremely limited amount of information that forms the entire basis for a panelist’s decision means that the URS may not be the best option for domain names that could be considered “generic” for any reason. If you have questions regarding your specific situation, please contact your Boyle Fredrickson attorney.