• Home
  • Categories
    • Domain Sales
    • Services
    • Domain Registrars
    • Domain Parking
    • Expired Domains
    • We Get It
    • Policy & Law
    • Uncategorized
    • Podcasts
  • About
  • Advertise
  • Disclosures
    • Facebook
    • RSS
    • Twitter
    • YouTube

Domain Name Wire | Domain Name News

Domain Name Industry News

Featured Domains

URS Panelist: “Complainant’s business may be worldwide but it is not out of this world”

by Zak Muscovitch — August 1, 2018 Policy & Law 0 Comments

Uniform Rapid Suspension is designed for cases with an overwhelming evidence of bad faith.

This post is part of a series on UDRP issues by the Internet Commerce Association.

Uniform Rapid Suspension (URS) is a relatively new mechanism for trademark owners to employ in cases of cybersquatting. It enables a trademark owner to suspend a domain name (but not obtain the transfer, as that is left for the UDRP) in cases where there is “clear and convincing” evidence that the registrant registered and used the disputed domain name in bad faith. This is a higher evidentiary standard than in the UDRP, which is “on the balance of probabilities”.

The URS only applies to new gTLDs and a handful of other gTLDs[1], and is intended to be a quicker procedure than the UDRP where the evidence of bad faith is overwhelming. Suspending a domain name and thereby disabling an associated website, particularly on only 14 days’ notice to the registrant, is a severe remedy and therefore should be limited only to those cases where there is no genuine issue in dispute and the matter is easily decided in a couple quick paragraphs by the panelists.

Most trademark attorneys who bring a URS proceeding understand the limitations of the URS. It is not intended as a substitute for the UDRP, nor is it intended to make it easy to suspend a domain name absent clear and convincing evidence of bad faith.

In the case of supercluster.space, Oracle International Corporation brought a URS against the registrant. Oracle International had a trademark for SUPERCLUSTER in connection with its computer hardware and software business and there was evidence that the respondent was offering the domain name for sale. Nevertheless, as NAF Panelist Darryl C. Wilson correctly pointed out:

Complainant’s mark is fanciful and distinct in regards to computers but is merely descriptive regarding astronomy and cosmology. Superclusters are found in space and have been part of the common vernacular relative to space discussion since the early 20th century. Use of superclusters in connection with space does not indicate that Registrant is any way acting in bad faith per Complainant’s computer business. Complainant’s assertions that its business is worldwide and therefore Registrant must have registered the .space domain name in recognition of the scope of Complainant’s business is logically inconsistent. Complainant’s business may be worldwide but it is not out of this world. Procurement of a trademark for a common term does not preclude others from using the term in its common manner. [emphasis added]

Like with the UDRP, in the URS the registration of common terms – even for resale – is not considered bad faith absent a specific intent to target a particular brand owner. In this case, the Complaint failed because the Complainant attempted to suspend the registrant’s domain name, without any clear and convincing evidence of an intent to capitalize on the Complainant’s mark which was limited to computers. The registrant had every right to register the disputed domain name, as having a trademark for one category of goods or services, does not enable a trademark owner to monopolize a common term.

As such, this case presents an important lesson for trademark owners and their attorneys who are considering the URS. The URS can be an effective tool in dealing with cybersquatting in new gTLDs, but it is not an avenue for interfering with the registration of common terms absent clear evidence of bad faith. In all cases, Panelists must enforce the applicable threshold of clear and convincing evidence of bad faith registration and use.  Mere non-use in connection with a common term doesn’t come close to meeting this threshold. The Internet Commerce Association applauds Panelist Darryl Wilson in upholding this crucial test under the URS.

[1] See the ICA’s comment on this issue, here

Zak Muscovitch is General Counsel to the Internet Commerce Association, a group that advocates on behalf of domain name investors.

  • Tweet
  • Email

0 Comments Tags: uniform rapid suspension, urs

A strange thing is happening to domain names suspended in URS

by Andrew Allemann — November 18, 2016 Policy & Law 4 Comments

…they’re being renewed.

Uniform Rapid Suspension (URS) was introduced as an alternative to Uniform Domain-Name Dispute-Resolution Policy (URDP) when new top level domain names were introduced.

URS is a faster, cheaper version of UDRP. A big difference is what happens when a Complainant wins. In the case of a URS, the domain name is merely suspended instead of being transferred to the complainant like it is in a UDRP.

This has always seemed a bit silly to me. A company pays money to suspend a domain name, only to have it expire and drop at a later date so anyone else can register it? (Perhaps I’m looking at it the wrong way since so many domain names won in UDRPs end up being let go at a later date.)

I analyzed the first 50 domain names that were suspended under URS at National Arbitration Forum to see what happened to them after they expired.

All 50 domain names were suspended between March and June of 2014, which is very soon after new top level domain names were released in general availability. Where are these domain names now? Here’s what I found: Click here to continue reading…

  • Tweet
  • Email

4 Comments Tags: udrp, uniform rapid suspension, urs

Lawsuit filed over .email domain names

by Andrew Allemann — September 2, 2014 Policy & Law 126 Comments

Yoyo.email files lawsuit after barrage of URS and UDRP complaints.

YoYoLast month I wrote about Yoyo.email Ltd, a company that has found itself in legal hot water after registering over 4,000 .email domain names.

Many of the domain names match well known brands, such as 7eleven.email, Geico.email and Budlight.email. As a result, Yoyo has already been on the receiving end of at least 34 URS (Uniform Rapid Suspension) and UDRP cases.

Yoyo.email is fighting back. Last Friday it filed a lawsuit (pdf) in federal district court in Arizona.

The lawsuit, filed against PlayInnovation, seeks declaratory judgement following an adverse URS decision for PlayInnovation.email. Traverse Legal, which is representing YoYo.email, is also using the case to try to get similar relief for all of Yoyo.email’s domain names.

The PlayInnovation.email URS case definitely met the definition of rapid suspension. The domain was registered, URS filed and decision rendered on the same exact day.

Part of Yoyo’s argument is that cases are being filed based on potential future use. The timeline of the PlayInnovation.email case brings home that point.

It also calls into question the accuracy of information in National Arbitration Forum panelist Carol Stoner’s determination.

In finding against Yoyo, Stoner wrote:

Complainant has submitted reliable evidence showing that Registrant has offered the domain name for sale, in accordance with URS 1.2.6.3(a). Complainant has submitted reliable evidence showing that Registrant intentionally attempted to attract for commercial gain, internet users to registrant’s website or other online location, by creating a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s website or location or of a product or service on that website or location, in accordance with URS 1.2.6.3(d).

Yoyo argues that there was no offer to sell the domain name or evidence submitted supporting these findings.

It certainly seems implausible that PlayInnovation was able to submit such evidence the same day the domain was registered. I’m not entirely sure how PlayInnovation found out about the registration so quickly; “PlayInnovation” is not registered with the Trademark Clearinghouse.

The suit also questions if a UDRP panelist cut-and-pasted information from one case into an irrelevant one.

URS is supposed to be fast and inexpensive, but is justice being served too quickly?

Yoyo contends that its use of brand-matching .email domain names will be in a backend manner that will not be visible to web users, and thus does not run afoul of cybersquatting rules.

  • Tweet
  • Email

126 Comments Tags: .email, new tlds, udrp, urs, yoyo.email

Registrant of 4,000+ .email domain names faces mounting legal problems

by Andrew Allemann — August 19, 2014 Policy & Law 9 Comments

Yoyo.email claims it registered trademark-matching .email domain names for a legitimate fair use. Most National Arbitration Forum panels have disagreed.

yoyo.emailYou’ve probably never heard of Yoyo.email before, but it is one of the biggest individual registrants of new top level domain names in a single TLD. The company registered over 4,000 .email domain names.

The problem for Yoyo.email is that a large number of these domain names match famous trademarks, such as dunkindonuts.email, budlight.email, geico.email and footlocker.email.

As a result, the company has faced at least 15 UDRP/URS cases.

Giovanni Laporta, founder of yoyo.email, told Domain Name Wire he has received over 100 cease & desist letters about his .email domain names. I suspect many of them were generated after he clicked through Trademark Clearinghouse notices for many of his domain names.

So is the guy a big cybersquatter? Laporta says he has registered the domain names for legitimate purposes.

His company plans to offer a “certified email” service that verifies that emails sent to a company were actually delivered. He says his use of the domain names would be a “fair use” in a technical, backend manner and believes URS and URDP are being unfair to him.

He has convinced one panel that there’s at least question of fair use.

Yoyo.email appealed an adverse URS decision for stuartweitzman.email. The appeal panel overturned the original decision on the grounds that the use of the domain name for a free service at least “raises a question as to whether the proposed use will be a legitimate fair use under URS”.

But other appeal panels have found otherwise. He has lost three appeals so far.

In an appeal over lufthansa.email, the panel considered that a technical/backend, non-commercial use of the domain names, under some circumstances, could be seen as a legitimate use.

However, the panel found this at odds with Laporta’s statement that yoyo.email is a serious business with up to ten employees that has spent “a lot of money” developing its service. Laporta told the panel that it will “make money by the value of having large numbers of active users…”, by charging for connected social media, as well as connected advertising.

In one case he mentioned how the company would monetize the service. In another case he said that original statement about making money from it was in error.

Laporta told Domain Name Wire that all of the adverse URS/UDRP decisions have been based on what “may” happen in the future, not on the actual use of the domain names to date (nothing).

It’s worth noting that a panel just handed down a decision in favor of the registration of porsche.social, determining that the planned use as a free enthusiast site means the domain shouldn’t be suspended under URS. I suspect this will be a controversial decision.

Laporta plans to file a federal lawsuit seeking declaratory relief over his registrations.

  • Tweet
  • Email

9 Comments Tags: uniform rapid suspension, urs

Porsche loses Porsche.social URS to planned fan site

by Andrew Allemann — August 18, 2014 Policy & Law 7 Comments

Porsche.social is just a parked page, but its owners claim to be creating a free site for Porsche enthusiasts.

PorscheCar company Porsche has lost a Uniform Rapid Suspension cybersquatting case it brought against the San Jose, California owner of Porsche.social.

Interactiv Corporation told the URS panel that it plans to use the domain name for a free community for Porsche car enthusiasts and will put a disclaimer on every webpage that it is not affiliated with or authorized by the car company.

Thus, Panelist Karl V. Fink determined that “Complainant has not established by clear and convincing evidence that Registrant has no right or interest in the domain name and has not established that the domain was registered or is being used in bad faith.”

As of right now, I just see a parked page at the domain name.

I’ll admit to being a little surprised by this decision. Perhaps it hinged on the relatively short time the domain name had been registered and the owner’s intention to create a “free” site. Will that be monetized by advertising?

Can anyone register a brand name in a new TLD like .social and claim future plans to create a free community site?

Does a “free” service mean you are free to use a brand name in a domain name? Another URS panel, on appeal, ruled that offering a free service creates a question of legitimate use, and found for the respondent.

What happens if the domain is still parked months from now?

I suspect, at that point, Porsche could just file a UDRP.

  • Tweet
  • Email

7 Comments Tags: porsche, urs

Next Page »
Get the DNW Newsletter – sign up here.

Archives

Partners & Sponsors

HostingFacts.com



Top Stories

  • 01.

    Ethos paid $1.135 billion for .Org

    POSTED UNDER Policy & Law

  • 02.

    ISOC chapter breaks ranks, criticizes deal to sell .Org

    POSTED UNDER Policy & Law

  • 03.

    CBD company pays $160,000 for GreenRoads.com after losing UDRP

    POSTED UNDER Domain Sales

  • Privacy Policy & Terms of Service
  • Disclosures
  • Advertising
© 2005–2019 Domain Name Wire • DNW and Domain Name Wire are trademarks of Brainstorm Labs, LLC

loading Cancel
Post was not sent - check your email addresses!
Email check failed, please try again
Sorry, your blog cannot share posts by email.