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.,
D2014-0999 clarins.club Clarins
D2014-1116 kpn.international Koninklijke KPN N.V.
D2014-1102 electrolux.company Aktiebolaget Electrolux
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
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.