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Archive for the ‘URS’ Category

INTA Issues 6 Month Bulletin on Results of URS Cases

August 20th, 2014 Comments off
The International Trademark Association (INTA) issued what it called a 6 month  Bulletin on the results of cases filed under the Uniform Rapid Suspension (URS) procedure. INTA says that a total of 92 URS cases have been filed to date 88 with the National Arbitration Forum in the United States (NAF) and four with the […]
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RMIT University Loses URS On RMIT.Education, To A Parked Page With Links To It

August 11th, 2014 Comments off
RMIT University of Melbourne, Australia lost its bid to get the domain name RMIT.education suspended through a Uniform Rapid Suspension (URS) proceeding. Its a pretty amazing finding in that the  domain holder didn’t even respond to the URS, Complainant had a valid trademark, and the domain name  is parked and contains links to the school, […]
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Frank Schilling’s North Sound Names Wins Another URS On Hello.Photo

August 10th, 2014 Comments off
Frank Schillings North Sound Names has won another Uniform Rapid Suspension (URS) on the domain name Hello.Photo to Complainant, HOLA S.L. of Madrid, Spain, who has trademarked “HELLO!”, “in one or more countries”. John Berryhill, represented North Sound Names. Omar Haydar, the examiner found: The Respondent has registered the domain name , and is the […]
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Principal Financial Loses URS On Principal.Guru

August 7th, 2014 Comments off
Principal Financial Services,just lost a Uniform Resolution Proceeding on the domain name Principal.Guru The company filed a separate URS on the domain names principal.services principal.center Which case has not been decided yet but I would not expect that to go any better for Principal than this URS. The record shows Respondent’s use of the disputed […]
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Have Trademark Holders Given Up On The URS? Last 17 Disputes Filed, 15 Were UDRP’s

July 6th, 2014 Comments off

Have trademark holders given up on the Uniform Resolution Service?

The URS is something that trademark holders and their representative pushed for at ICANN for years.

A cheap, quick take down on obviously trademark infringing new gTLD domain registrations.

Although the URS is exactly that a much cheaper and quicker process than a UDRP, if a trademark holder wins a URS the domain registration is simply suspended for the term of the registration and becomes available for re-registration once it drops.

Since June 15th, 26 UDRP have been filed on new gTLD domain names while only 6 URS have been filed.

The last URS was filed on June 30 on the domain name marmara.club and the one before that on June 26th on the domain name ibm.xn--3ds443g. Since June 26th, 15 UDRP’s were filed.

It looks like trademark holders are for the moment opting for filing UDRP’s in lieu of URS

Here are the UDRP filed on new gTLD’s from June 15, 2014:

D2014-1172 garnier.email, kiehls.email L’Oréal SA

D2014-1171 geforce.graphics NVIDIA Corporation

D2014-1167 walmart.reviews Wal-Mart Stores, Inc.

D2014-1145 sanofi.email Sanofi

D2014-1138 clarins.center CLARINS

D2014-1144 uniqlo.clothing Kabushiki Kaisha Fast Retailing, dba Fast Retailing Co., Ltd.,

1567649 corninggorilla.glass

1567719 vivintsolar.solar

1564630 vanheusen.clothing

1564059 kohler.plumbing

D2014-0999 clarins.club Clarins

D2014-1116 kpn.international Koninklijke KPN N.V.

D2014-1102 electrolux.company Aktiebolaget Electrolux

565523 aeo.xyz

D2014-1091 lonelyplanet.photography Lonely Planet Global, Inc.

D2014-1083 osram.lighting OSRAM GmbH

D2014-1077 petrobras.guru Petroleo Brasileiro S.A. Petrobras

D2014-1075 petrobras.holdings Petroleo Brasileiro S.A – Petrobras

D2014-1076 petrobras.technology Petroleo Brasileiro S.A – Petrobras

D2014-1054 sheraton.caB Sheraton International IP, LLC Starwood Hotels & Resorts Worldwide Inc. The Sheraton LLC -
D2014-0698 statoil.today Statoil ASA (“Statoil”)

D2014-1040 stregis.club, westin.club, whotels.club Starwood Hotels & Resorts Worldwide, Inc.

D2014-1038 oshkoshbgosh.clothing OshKosh B’Gosh, Inc

D2014-0434 stihl.equipment Andreas Stihl AG & Co KG

D2014-0576 stihl.ceo Andreas Stihl AG & Co KG

D2014-1029 docmarten.clothing “Dr. Maertens” Marketin

Categories: External Articles, new gTLDs, udrp, URS Tags:

Sci.Technology Suspended in URS “Sci” is not a Generic Term but Rather the Trademark”

June 25th, 2014 Comments off

The new gTLD domain name sci.technology was ordered suspended by a Uniform Rapid Suspension (URS) examiner.

The Complainant SANMINA CORPORATION of San Jose, California filed the URS complaint based on its U.S. Trademark Registration issued June 2, 1992, on the term “SCI” (the “Trademark”).

The Trademark is for “manufacturing of electrical, electronic, electromechanical and mechanical products to the order and specification of others”, and “design and development of electrical, electronic, electromechanical and mechanical products for others.”

Complainant uses the Trademark at a website, in conjunction with the use of the trade and corporate name “SCI Technology, Inc.”, that discusses the company’s design, manufacture, qualification, and support of military and commercial aviation, ground technical and other defense applications, and industrial and space flight programs.

Respondent uses the registered domain name at a website, in conjunction with the trademark SCI.TECHNOLOGY, that includes links to articles pertinent to science and technology topics.

Complainant’s showings demonstrate that there is no genuine issue of material fact regarding the first element of the URS. The disputed domain name includes the entirety of the Trademark and the non-distinctive, generic gTLD “technology.”

Registrant’s defense, that it has a right to use the generic terms “sci” and “technology” in conjunction with science and technology topics, is not relevant given Complainant’s trademark registration and proof of use of the Trademark.

Registrant has not explained why it registered and used the domain name and has submitted no defense specifically directed to Complainant’s contentions regarding the second and third elements of the URS.

There is no genuine issue of material fact regarding the second element of the URS.

Registrant’s defense of the use of the combination of two generic terms in the disputed domain name must fail because one of those terms, “sci”, is not a generic term but rather the Trademark.

What is telling as to Registrant’s knowledge and intent is the combination of “sci” and “technology”in an order that mimics Complainant’s trade and corporate name “SCI Technology, Inc.”

Registrant also uses the domain name as a commercial trademark at its website. And, Registrant does not allege any legitimate or fair use of the domain name.

The Examiner must conclude that Registrant is intentionally attracting for commercial gain Internet users to Registrant’s web site by creating a likelihood of confusion with the Trademark.

Thus there is no genuine issue of material fact regarding the third element of the URS.

The Examiner hereby Orders the following domain names be SUSPENDED for the duration of the registration.

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Frank Schilling’s North Sound Names Hit With Another URS On Two .Link Domains

June 17th, 2014 Comments off

Frank Schilling’s North Sound Names is the subject of a second URS filing over two domain names it registered of Uniregistry strings,  aix.link and db2.link.

North Sound Names already successfully defended its first URS case filed against it, on Finn.Link

North Sound reportedly registered some 43,000 domain names in extensions owned by Uniregistry with .Link domains being heavily represented.

Although the Complainant on the URS filed today is not listed I would not be surprised to see it being IBM.

According to Wikipedia, “AIX, (Advanced Interactive eXecutive), is  a series of proprietary Unix operating systems developed and sold by IBM for several of its computer platforms”, while DB2 is according to Wikipedia.org, a “family of database server products developed by IBM”.

On the other hand both domain names are parked and neither sites refer to any computer software or other similar products and have no links related to IBM or a competitor.

AIX is also a known in reference to many other things including the Armani Exchange and Db2 stands for many other things including  a model of a rather expensive and fast Aston Martin car, which means this URS it will probably end with another win for Mr. Berryhill and Mr. Schilling.

 

 

 

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14 Year Old eMoney.com Hit With UDRP; URS Filed On Sci.Technology

June 16th, 2014 Comments off

The owner of the domain name eMoney.com has just gotten hit with a UDRP.

The domain name according to DomainTools.com has an original registration date of 2000 and the registrant/administrative contact still as it was in 2000, a “E Will”.

The domain name current seems to be directing into an advertising program as opposed to going to a site or a PPC or landing page.

The domain was until December of 2013 according to screenshots.com parked for many years.

The complainant of  the UDRP is not listed.

There are 2 live trademarks in the United States alone:

eMoney Advisor, LLC filed July 3, 2012 granted March 4th 2014.

Edward Vaughan of Sterling, Virgina which was filed in 2002.

In another note a URS was filed today on the domain name sci.technology.

Have no idea of how that domain registration is going to rise to the level it has to for a URS to be granted  but we will keep our eye on both of these.

Categories: External Articles, udrp, URS Tags:

This Is Why There Needs To Be A Penalty For Someone Bringing A Groundless URS

June 16th, 2014 Comments off

Talk about a waste of time and money.

You probably will never find a better case for providing a penalty for someone who brings a groundless Uniform Rapid Suspension (URS) proceeding than this one.

As you may know unlike the UDRP which at least carries a potential “penalty” in the form of Reverse Domain Name Hijacking (RDNH) a URS carries no similar “penalty”

In this case the URS involved a three letter generic new gTLD domain.

The domain name Bas.Graphics was registered by QA Graphics of Ankeny, IA.

The Complaint was brought by BAS Services & Graphics, LLC. of Austin, TX, not exactly a household name.

The URS examiner, Mr. Sebastian Matthew White Hughes, gave the complaint a swift kick out of the door finding that the Complainant didn’t even have a registered trademark much less a trademark submitted to the Trademark Clearing House (TMCH) but instead showed up with its 2011 Name Certificate filed with the State of Texas ; its 2014 Florida Limited Liability Company Annual Report; its Articles of Organization; and its Application for Registration of Fictitious Name for “Building Automation Systems Service.

The examiner correctly found that “None of these documents constitute a valid national or regional word mark registration. Complainant has not provided any evidence to satisfy the first limb of the URS. It follows that the Complaint must be denied on these grounds alone.”

However the The Examiner went further to find the Registrant “has been providing services relating to BAS graphics since 2006 and therefore has a legitimate right or interest to the domain and Complainant has failed to establish the domain was registered and is being used in bad faith.”

“”””Respondent contends, as Complainant possesses no relevant trade mark rights, as the incident of consumer confusion relied upon by Complainant predated the date of registration of the domain name, as BAS graphics is a generic term, and as Respondent has been successful in relation to BAS graphics, these proceedings have been brought in order to harass Respondent, and constitute an abuse of the proceedings.

“It appears the proceedings have been brought under the misapprehension that Complainant can rely on common law rights, including Complainant’s various company registration documents. The evidence does however show that Complainant possesses prior common law rights in the term BAS graphics, if nothing else, by virtue of Complainant’s prior registration of the domain name .

“In all the circumstances, the Examiner is not prepared to make a finding that the Complaint is an abuse of the proceedings or that the Complaint contained material falsehoods.”

Categories: External Articles, Legal, URS Tags:

Frank Schilling’s North Sound Names Wins Its 1st URS On Finn.Sexy

May 26th, 2014 Comments off

Finn.no AS of Oslo, Norway just lost a Uniform Rapid Suspension (URS) on the the domain name Finn.sexy.

The domain name is owned by North Sound Names which is a company associated with Frank Schilling, who also owns Uniregistry and of course John Berryhill, Esq represented the domain holder.

This is the first URS case decided that involved North Sound Names and the 1st URS represented by John Berryhill.

North Sound Names is the company that was set up to register New gTLD’s of Uniregistry.

North Sound Names registered this domain on March 15th and the Complainant Submitted the URS on May 9, 2014
Complainant has established that it is the proprietor of the valid trademark FINN, registered in Norway, No. 192448 on August 27, 1998, in classes 35, 36, 38, 39, 41 and 42.

Respondent registered the domain name on April 15, 2014. It resolves to a website offering the domain name for sale and containing links entitled “First Names”, Selfies”, “Diet”, “Fitness”, Social Networks”, Dating” and “Modeling”. The word “Finn” is a common name.

There is no evidence that Respondent registered the domain name otherwise than to benefit from its significance as a common name.

Although the domain name is for sale, there is no evidence that Respondent registered the domain name primarily for the purpose of selling it to Complainant or to a competitor of Complainant.

Although Respondent was notified of Complainant’s trademark as part of the registration process, the generic nature of the word Finn and the content of the website to which the domain name resolves militate against any finding that Respondent intended to take advantage of the trademark significance of that name.

DETERMINATION

After reviewing the parties’ submissions, the Examiner determines that the Complainant has NOT demonstrated all three elements of the URS by a standard of clear and convincing evidence; the Examiner hereby Orders the following domain name(s) be returned to the control of Respondent; finn.sexy

Alan L. Limbury
Examiner

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