The new generic top level domain (gTLD) program created by the Internet Corporation of Assigned Names and Numbers (ICANN) will normally be implemented at the end of the year. It involves the creation of many new domain names so brands owners have started to protect their trademarks by registering these. Brands registered at Trademark Clearinghouse (TMCH) have the priority for registering their name on the new extensions they chose. This is called the sunrise period and is valid for thirty days from the creation of a new extension.
Facebook is the first brand owner to file a dispute using the Uniform Rapid Security System (URS(S) a new domain dispute resolution system created to provide a fast and effective way to protect registered trademarks. It’s also an alternative to the Uniform Dispute Resolution Policy (UDRP) already used by trademark holders. However the new ICANN’s system is faster and quite cheaper.
The world largest social network used this new dispute resolution system to dispute the ownership of a new domain name: Facebok.pw (Operator of the “.pw” registry adopted the URS in May 2013).
Facebook submitted the first complaint through URS on 21 August 2013, contesting the registration of facebok.pw as the domain was created only to generate click-through revenue for the registrant. Also, registrant didn’t respond to the complaint and had previously been accused of cybersquatting.
According to the URS system, a domain can be transferred to another entity only if three elements are brought together:
→ The domain must be identical or confusingly similar to the trademark
→ The registrant must have no legitimate rights or interests in the domain
→ The domain must be registered and used in a dishonest manner.
Facebook won the case on 27 September.
In this resolution, the National Arbitration Forum decided “after reviewing the Complainant’s submissions, the Complainant has demonstrated all three elements of the URS by a standard of clear and convincing evidence. The Examiner hereby orders domain name be suspended for the duration of the registration”.
We must note the correct application of intellectual property law, ensuring that brands and their trademarks remain safe within the arrival of the new gTLD. It is a new competence to develop for lawyers who must be able to handle URS claims.
Nevertheless we could emphasize the irony of the situation because Facebook didn’t take part of the new gTLDS program, unlike Google or Amazone, but it was still the first beneficiary of URS system.
Christophe PUECH
