IBM has won the first Uniform Rapid Suspension case to be filed against a new gTLD domain name.
National Arbitration Forum panelist Darryl Wilson handed down the perfunctory decision February 12, just seven days after IBM complained about ibm.ventures and ibm.guru.
Both domains have now been suspended, redirecting to a placeholder web site which states:
This Site is Suspended
The Domain Name you’ve entered is not available. It has been taken down as a result of dispute resolution proceedings pursuant to the Uniform Rapid Suspension System (URS) Procedure and Rules.
For more information relating to the URS, please visit: http://newgtlds.icann.org/en/applicants/urs
It was a slam dunk case, as you might imagine — the URS is designed to handle slam-dunk cases.
The registrant, who we estimate spent $2,500 on the two names, did not do himself any favors by redirecting both names to IBM’s .com site.
As we and Wilson both noted, this showed that he’d registered the names with IBM in mind.
IBM’s mark is included in the Trademark Clearinghouse, so the registrant will have been given a warning at the point of registration that he may be about to infringe someone’s IP rights.
Since the names were registered IBM, we’re told, has purchased a Domain Protected Marks List block from the registry, Donuts, which will prevent the names being re-registered when they expire.
If you were a cybersquatter, would you spend $2,500 on just two domain names without doing even the most basic research into whether you’d get to keep the names?
One individual from New Jersey has done precisely that, apparently, and has now been hit with what may well be the first new gTLD Uniform Rapid Suspension complaint, according to Donuts.
Donuts VP Mason Cole said in a DI comment today that the company has “been notified of an additional URS action involving two IBM names.”
I believe he’s referring to ibm.guru and ibm.ventures, two new gTLD domains I highlighted earlier today as being registered under Go Daddy’s Whois privacy service.
Privacy protection has since been lifted from both domains, in accordance with Go Daddy policy, revealing the registrant (assuming it’s not a fake name) as one Denis Antipov of New Jersey.
Both domains were redirecting to ibm.com when I checked a few days ago — showing that the registrant clearly had IBM in mind when he bought the names — but now do not resolve for me.
What’s funny is that the registration date of the domains is January 31. Due to Donuts’ Early Access Program, the registrant will have paid Go Daddy a total of $2,479.98 for the pair.
Now, he stands to lose that investment in a URS case that will set IBM back about the same amount.
Donuts’ Cole said: “When infringement is alleged, we want to see the due process tools developed for new TLDs put to use. Registries are not trademark adjudicators — we implement the objective decisions of others.”
UPDATE: An earlier version of this story incorrectly reported the price the registrant will have paid for these names.
Facebook has become the first company to win a Uniform Rapid Suspension complaint.
The case, which dealt with the domain facebok.pw, took 37 days from start to finish.
This is what the suspended site now looks like:
The URS was designed for new gTLDs, but .PW Registry decided to adopt it too, to help it deal with some of the abuse it started to experience when it launched earlier this year.
Facebook was the first to file a complaint, on August 21. According to the decision, the case commenced about three weeks later, September 11, and was decided September 26.
I don’t know when the decision was published, but World Trademark Review appears to have been the first to spot it.
It was pretty much a slam-dunk, uncontroversial decision, as you might imagine given the domain. The standard is “clear and convincing evidence”, a heavier burden than UDRP.
The registrant did not respond to the complaint, but Facebook provided evidence showing he was a serial cybersquatter.
The decision was made by the National Arbitration Forum’s Darryl Wilson, who has over 100 UDRP cases under his belt. Here’s the meat of it:
IDENTICAL OR CONFUSINGLY SIMILAR
The only difference between the Domain Name, facebok.pw, and the Complainant’s FACEBOOK mark is the absence of one letter (“o”) in the Domain Name. In addition, it is well accepted that the top level domain is irrelevant in assessing identity or confusing similarity, thus the “.pw” is of no consequence here. The Examiner finds that the Domain Name is confusingly similar to Complainant’s FACEBOOK mark.
NO RIGHTS OR LEGITIMATE INTERESTS
To the best of the Complainant’s knowledge, the Respondent does not have any rights in the name FACEBOOK or “facebok” nor is the Respondent commonly known by either name. Complainant has not authorized Respondent’s use of its mark and has no affiliation with Respondent. The Domain Name points to a web page listing links for popular search topics which Respondent appears to use to generate click through fees for Respondent’s personal financial gain. Such use does not constitute a bona fide offering of goods or services and wrongfully misappropriates Complainant’s mark’s goodwill. The Examiner finds that the Respondent has established no rights or legitimate interests in the Domain Name.
BAD FAITH REGISTRATION AND USE
The Domain Name was registered and is being used in bad faith.
The Domain Name was registered on or about March 26, 2013, nine years after the Complainant’s FACEBOOK marks were first used and began gaining global notoriety.
The Examiner finds that the Respondent has engaged in a pattern of illegitimate domain name registrations (See Complainant’s exhibit URS Site Screenshot) whereby Respondent has either altered letters in, or added new letters to, well-known trademarks. Such behavior supports a conclusion of Respondent’s bad faith registration and use. Furthermore, the Complainant submits that the Respondent is using the Domain Name in order to attract for commercial gain Internet users to its parking website by creating a likelihood of confusion as to the source, sponsorship or affiliation of the website. The Examiner finds such behavior to further evidence Respondent’s bad faith registration and use.
The only remedy for URS is suspension of the domain. According to Whois, it still belongs to the respondent.
Read the decision in full here.
Directi has become the first TLD registry to start complying with the Uniform Rapid Suspension process for cybersquatting complaints.
From today, all .pw domain name registrations will be subject to the policy, which enables trademark owners to have domains suspended more quickly and cheaply than with UDRP.
URS was designed, and is obligatory, for all new gTLDs, but Directi decided to adopt the policy along with UDRP voluntarily, to help mitigate abuse in the ccTLD namespace.
URS requirements for gTLD registries have not yet been finalized, but this is moot as they don’t apply to .pw anyway.
To date, only two UDRP complaints have been filed over .pw domains.
The National Arbitration Forum will be handling URS complaints. Instructions for filing can be found here.
ICANN seems to have changed its mind about requiring Uniform Rapid Suspension providers to sign enforceable contracts, angering the Internet Commerce Association.
As we reported in May, the ICA claimed a victory when ICANN said in a written answer to its persistent inquiries that URS providers would be bound by contract.
An ICANN Q&A, referring to a question the ICA’s Phil Corwin asked at the ICANN meeting in Beijing, said:
[Q] As regards Uniform Rapid Suspension (URS) providers, will there be a contract developed that goes beyond the non-enforceable memorandum of understanding? Will there be other URS providers?
[A] Yes, a contract is being developed and additional URS providers will be added.
It’s difficult to interpret that as anything other than “Yes, a contract is being developed.” The fact that the question draws the distinction between a contract and an MoU seems to remove any ambiguity.
But at the ICANN 47 meeting in Durban last week, ICANN appeared to backtrack on this position.
During a URS demo session, gTLD registry services director Krista Papac said that URS providers will only have to agree to an MoU.
“This breach of a written commitment is unacceptable,” Corwin later said at the Public Forum on Thursday.
In response, ICANN deputy general counsel Amy Stathos said:
An MoU is a contract. I recognize that you don’t necessarily recognize that as the full contract that you were contemplating or that had been contemplated. But that is a contract. And it calls and requires the URS providers to comply with all the rules and procedures that are in the Guidebook.
On Friday, ICANN then published a (hastily written?) document that sought to spell out its position on contracts for URS and UDRP providers. It says:
ICANN has carefully considered whether the introduction of contracts is feasible or useful in the scope of UDRP proceedings, and has determined that contracts would be a cumbersome tool to assert to reach the same outcome that exists today.
It goes on to address some of the concerns that the ICA and others have put forward in the past. The organization, which represents big-volume domainers, is worried that some UDRP providers find more often in favor of complainants in order to secure their business. Enforceable contracts, it says, would help prevent that.
ICANN said in its new position statement (pdf) that it has never seen behavior from UDRP providers that would require it to take action, but added:
Of course, there is always the future possibility that an issue of non-compliance will arise that will require corrective action. In recognition of that potential, ICANN commits that substantiated reports of UDRP provider non‐compliance with the UDRP or the Rules will be investigated.
Contracts, it said, would not stop forum shopping.