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.
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.
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.
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.”