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By Alexis Kramer
Jan. 16 — Experience to date with the faster, less costly Uniform Rapid Suspension System illuminated small distinctions between the new rights protection mechanism's bad faith analysis and that of the Uniform Domain Name Dispute Resolution Policy, but inconsistencies between URS panels have produced a few grey areas as to what outcomes trademark owners can expect under the new remedy.
URS panels came to opposite conclusions on whether UK company Yoyo.Email registered its domain names with the intent to monetize well-known brands. A URS panel also found that the passive holding of a domain name was sufficient to show bad faith where the registrant was aware of the trademark and did not explain why it was holding the name, in contrast to the URS' usual stance that there must be some action on behalf of the registrant.
URS panels will incorporate the new top-level domains into their bad faith analyses where the gTLD lends meaning to the domain name and adds to the confusion with a well-known trademark. Prior to the introduction of the Internet Corporation for Assigned Names and Numbers' new gTLD program, UDRP panels usually disregarded gTLDs (e.g., .com) under the confusing similarity test as merely a technical requirement of the domain name. UDRP panels have not yet considered gTLDs in their bad faith analyses.
A URS panel held that the .coffee gTLD added meaning to the domain name, maxwell-house.coffee, to show that the registrant intended to mislead Internet users into believing that its website was affiliated with the well-known coffee company's trademark. Another panel ruled that .menu added meaning to dunkin.menu to confirm the registrant's intent to divert users from the Dunkin' Donuts official website for commercial gain.
The URS' requirement of a higher burden of proof, the clear and convincing standard, has resulted in the denial of bad faith claims that may have satisfied the less rigorous, preponderance of the evidence standard under the UDRP.
A URS panel held that the redirection of the domain name, nissan.technology, to Nissan Motor Co. Ltd.'s official website constituted fair use of the trademark. UDRP panels have generally held that the redirection to a trademark owner's website evidences awareness of the trademark and amounts to bad faith. Another URS panel decided that a domain name resolving to a pay-per-click parking page that did not consist exclusively of links related to the complainant's industry did not establish bad faith. UDRP panels have held that any monetization of a trademark will establish bad faith.
ICANN created the URS as a faster, lower-cost alternative to UDRP proceedings for trademark owners who have the most clear-cut cases of cybersquatting. ICANN intended that cases brought to the URS could be quickly decided, containing no disputes of material fact.
The URS was proposed to reduce the burden on trademark owners alongside the creation of ICANN's new gTLD program. It went live on the National Arbitration Forum's website in July 2013 and heard its first case a month later.
In this case, the panel issued a short decision ruling that the domain name, facebok.pw, was registered and used in bad faith because the registrant had a pattern of holding domain names almost identical to well-known trademarks and was using it to divert Internet users from the official Facebook website to the registrant's for commercial gain (Facebook Inc. v. Radoslav, Nat'l Arb. Forum, FA 1308001515825, 9/26/13).
The URS allows trademark owners to file a complaint against multiple domain names registered by the same domain name holder. Within 24 hours of receipt of notice of complaint from the URS provider, the registry operator will lock the domain in dispute. If the panel finds that the complainant has met the burden of proof, the registry operator will suspend the domain name for the remainder of the registration period, instead of being transferred to the complainant under the UDRP.
Trademark owners submitting a claim to the URS must ensure that they have a valid basis for asserting their claim. If the panel finds that there was not, it will impose a penalty for abuse of the process. After a finding of two abusive complaints, the URS will bar a complainant from utilizing the URS for one year.
Marina Lewis, a domain name specialist at Finnegan Henderson Farabow Garrett & Dunner LLP in Palo Alto, Cal., told Bloomberg BNA that a vast majority of cases result in the suspension of domain names because trademark owners will opt for the UDRP if their cases are not clear-cut, as they do not want to run the risk of this penalty.
A complainant must establish three elements to prevail in a URS proceeding: the disputed domain name is identical or confusingly similar to a mark that the complainant holds a valid trademark registration in and that is in current use; the respondent has no legitimate rights or interests in the domain name; and the domain name was registered and used in bad faith.
Circumstances that demonstrate bad faith registration and use include registering a domain name in order to:
• sell the domain name to the trademark owner or a competitor of the trademark owner for an exorbitant fee;
• prevent the trademark holder from reflecting the mark in a corresponding domain name;
• disrupt the business of a competitor; or
• intentionally attract for commercial gain, Internet users to the registrant's website by creating a likelihood of confusion with the complainant's mark as to the source or affiliation of the website.
The URS test varies slightly from the UDRP. The URS only protects active word marks that the complainant holds a valid trademark registration in, or that have been court-validated or protected by a statute or treaty. On the other hand, the UDRP simply requires that the complainant has rights in the mark. Bad faith under the UDRP may be demonstrated through the same non-exclusive list as under the URS.
URS panels have differed in their rulings under the same or similar factual scenarios. Steve Levy, counsel for FairWinds Partners LLC in Washington, told Bloomberg BNA that because URS determinations tend to be short for efficiency, panels do not explain their thought processes and the reasons for these inconsistencies can only be guessed.
Lewis said that UDRP decisions are also inconsistent, and that the URS has improved on this shortcoming due to its higher burden of proof. “The range of inconsistency in the URS is much more narrow because the standard is so high,” she said.
The URS came to opposite conclusions against domain name registrant Yoyo.Email, a UK company that registered thousands of .email domain names reflecting well-known brand names. Yoyo-Email lost about forty cases, but it won one or two even though the facts had not changed.
One panel decided in July 2014 that footlocker.email, one in a series of domain names within Yoyo.Email's directory that was allegedly set up to document the transmission of e-mail traffic, was registered and used in bad faith because of the registrant's intent to create a system that is commercial in nature (Foot Locker Retail Inc. v. yoyo.email et al., Nat'l Arb. Forum, FA1406001565344, 7/8/14).
The panel said that because there was clearly some commercial aspect involved in this e-mail courier service, Yoyo.Email was not engaged in a bona fide offering of services.
Footlocker Retail Inc. alleged that Yoyo.Email registered footlocker.email with the intent to disrupt Footlocker's business. Yoyo.Email asserted that it registered this domain name as part of a domain name directory that would act as an e-mail courier and document the sending and receiving of e-mails that flow through the domain names.
Yoyo.Email admitted that “naturally there will be some commercialisation of the ... website but it will never be directly related to the domain name.”
A different panel in September 2014 found that eHarmony Inc. did not demonstrate by clear and convincing evidence that Yoyo.Email registered and used eharmony.email in bad faith because the registrant did not intend to use the domain name to resolve to a website, did not make any use of the domain, and that the domain name was not visible to the public (eHarmony Inc. v. Yoyo.Email et al., Nat'l Arb. Forum, FA 1408001575592, 9/4/14).
The panel said that no evidence showed that Yoyo.Email was using the domain name to monetize its page, disregarding prior rulings that the registrant's .email domain names were set up for commercial purposes.
Two months later, another panel found that the domain name, stuartweitzman.email, which, like eharmony.email, did not resolve to an active website nor charge a user fee for the service, still evidenced bad faith because the service was intended to be a profitable, commercial enterprise (Stuart Weitzman IP LLC v. Laporta, WIPO, No. D2014-1537, 11/6/14).
The panel said that Yoyo.Email's claim that the users of its services will be not be charged a fee was irrelevant to the commercial aspect of the service.
Stuart Weitzman IP LLC, a well-known designer of women's footwear and handbags, argued that the respondent's business model has been the subject of numerous UDRP and URS proceedings, the majority of which holding that the respondent's business model is clearly commercial in nature and entirely dependent on the unauthorized acquisition of third party trademarks. It argued that Yoyo.Email intended to use the domain name for profit by deceiving users into believing that its e-mail service is affiliated with the STUART WEITZMAN mark.
Yoyo.Email asserted that the use of the domain name is non-public, and since no consumer will ever see the name, there cannot be a likelihood of confusion with the mark. It also said that while it did intend to profit from its e-mail service, it did not intend to profit from the trademark itself.
Levy expressed doubts over Yoyo.Email's alleged e-mail courier service. If the domain names are not visible to the public as Yoyo.Email claims, then it is not clear why the registrant would spend so much money on legal fees to defend them, Levy pointed out. Yoyo.Email could have avoided the aggravation by simply using a coded system (e.g., 12345.email) instead of its current trademark.email directory, he said.
The passive holding of a domain name, along with the registrant's inaction to respond to the complaint, was sufficient to show bad faith registration and use under the URS, a panel held in October 2014 in Morgan Stanley v. Yang Yi, Nat'l Arb. Forum, FA1409001582246, 10/20/14.
The panel said that it was “inconceivable” that the registrant of morganstanley.xyz was unaware of the MORGAN STANLEY mark when it registered the domain name.
The respondent registered the domain name but failed to put up an active page. Morgan Stanley did not present any other evidence of bad faith.
The panel cited Telstra Corp. Ltd. v. Nuclear Marshmallows, WIPO, No. D2000-0003, 2/18/00, where a UDRP panel held that the registrant's passive holding of a domain name reflecting a well-known trademark, inaction to provide evidence of good faith use, and concealment of its true identity amounted to bad faith. The panel in Telstra recognized that inaction could constitute bad faith use in certain factual circumstances.
In Morgan Stanley, the panel said that the registrant's inaction of not responding to the complaint was sufficient as an additional factor to satisfy the bad faith element.
Lewis said that it is not very common for a URS panel to find bad faith where the passive holding of a domain name is presented as the only evidence of bad faith activity. “The registrant doesn't necessarily have to be actively using the website, but it has to be doing something,” she said.
David Weslow, a partner at Wiley Rein LLP in Washington, agreed with Lewis that “passive holding” in and of itself is not usually going to meet the URS' higher burden of proof. “If a client asked to pursue a URS action where the passive holding of a domain name is the only evidence of bad faith, I would be hesitant because of this high standard,” he said.
Weslow suggested that because Morgan Stanley is fairly limited in meaning, a registrant of this domain name likely has no other intent than to profit off of the trademark owner's mark. A URS panel may not have found bad faith under similar facts for a domain name that could have more than one meaning.
In December, a URS panel held that the passive holding of the domain name, nissan.email, did not constitute bad faith because “Nissan” has several potential meanings and did not, by clear and convincing evidence, refer to the Nissan automobile brand (Nissan Motor Co. Ltd. v. Domains By Proxy LLC, Nat'l Arb. Forum, FA1412001593524, 12/24/14).
The panel said that the registrant's alleged intent to offer the domain name for sale to an unrelated third party with the name “Nissan” was not in bad faith because Nissan as a personal name is not affiliated with the NISSAN mark. Bad faith might have been found if Nissan could establish that the registrant was engaged in a pattern of registering domain names reflecting well-known trademarks, the panel said.
URS panels will consider the meaning carried by the gTLD extension when deciding whether a particular registration was made in bad faith, as well as in their assessment of confusing similarity. ICANN's new gTLD program has produced hundreds of new gTLDs, many of which have the potential to add meaning to the domain name itself and provide additional evidence of intent to profit from a trademark owner's mark.
In October 2014, a URS panel held that the .coffee gTLD in the domain name, maxwell-house.coffee, lent meaning to the domain name as a whole and showed that the registrant intended to divert Internet users to its website by creating a likelihood of confusion with the MAXWELL HOUSE trademark (Kraft Foods Group Brands LLC v. Jawal Nga, Nat'l Arb. Forum, FA1409001581977, 10/16/14).
The panel said that the registrant created the domain name long after the complainant, Kraft Foods Group brands LLC, acquired rights to the trademark, and that the MAXWELL HOUSE mark is widely recognized as a coffee brand. The panel held that the .coffee extension further contributed to the confusion.
The .menu gTLD, used in combination with a well-known food industry brand name, DUNKIN' DONUTS, was sufficient to show that the domain name registrant intended to divert Internet users from the trademark owner's website to his own for profit, a URS panel held in July 2014 (DD IP Holder LLC v. Manpreet Badhwar, Nat'l Arb. Forum, FA1405001562029, 7/14/14).
The panel said that .menu lent meaning to the “dunkin” element and added to the confusion that the registrant intended to create for commercial gain.
Complainant DD IP Holder LLC, owner of the nationally registered trademarks DUNKIN' and DUNKIN' DONUTS, alleged that the respondent registered the domain name, dunkin.menu, with the intent to profit from the DUNKIN' trademark by deceiving Internet users into believing dunkin.menu was associated with the mark.
The registrant argued that the term “dunkin” in his domain name referred to the basketball term, and that he was using the domain for his sports training business in India. The registrant asserted that the term “menu” referred to a series of techniques for playing basketball that students could learn in his summer basketball courses. The registrant submitted copies of posters distributed in India that he used to promote his courses.
Levy, attorney for the complainant, said that he contacted the schools listed on the posters, who responded that they had not heard of the basketball course. The complainant also alleged that the registrant's Facebook page did not have any mention of basketball.
The panel said that the registrant's ownership of over 360 other .menu domains of famous brand names, including hardrock.menu, leancuisine.menu, and royrogers.menu, demonstrated a pattern of cybersquatting. The .menu gTLD lent meaning to each of these domain names reflecting restaurants or food chains to add to the confusion with the respective brand. .Menu likewise had meaning in relation to “dunkin” and added to the confusion between the domain name and the DUNKIN' mark, the panel said. The registrant did not provide an explanation for using the .menu gTLD for these other domain names.
Levy pointed out that the bad faith in this case was clear, and that the registrant was trying to cover up his true intention in a “truly inventive but deceitful way” with fake classes and fliers advertising them. The registrant's attempt to explain “menu” as an offering of different dunking techniques seemed to be a stretch, and his lack of explanation for his other registered domain names was likely due to his inability to invent a believable justification for them, Levy said.
The panels in both the maxwell-house.coffee and dunkin.menu cases incorporated the gTLDs in their bad faith analyses, but they differed in their views of whether to include the gTLD in their analyses of confusing similarity. The panel in Kraft Foods relied on UDRP precedent that the gTLD is irrelevant in assessing identity or confusing similarity, and disregarded the .coffee extension for this element. The panel in DD IP Holder said that the reference to food and restaurants inherent in the .menu gTLD added to the confusing character of the domain.
Weslow said that the decision to look at the gTLD for both the confusingly similar and bad faith elements in DD IP Holder is an outlier, but that more URS decisions will follow the trend as the number of new gTLDs increase. Not all gTLDs will lend a meaning to the domain name, but gTLDs that do not may be relevant in determining that there is no bad faith. For example, a .restaurant domain name may lend a specific meaning towards a trademarked restaurant brand, and would likely show bad faith. A domain name with the .reviews gTLD, on the other hand, may be indicative of fair use.
UDRP panels have usually disregarded gTLD extensions in its analysis, except in certain cases where the gTLD may form part of the trademark. In the first UDRP decision over a new gTLD domain name, the .bike gTLD in canyon.bike exacerbated the confusing similarity of the domain name to the CANYON trademark because it described a Canyon bicycle, the main product of the trademark owner (Canyon Bicycles GmbH v. Domains By Proxy LLC, WIPO, No. D2014-0206, 3/14/14).
The panel said that “given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach.”
Weslow said that the UDRP may begin to consider incorporating gTLDs into its bad faith analysis as well. “We may actually see more helpful decisions from the UDRP” because, he said, UDRP panel decisions are more detailed and based on more expansive evidence than the URS.
The URS applies a higher evidentiary standard to ensure that its quick rulings are fair to all parties. URS panels have held that a domain name resolving to a parking page that contains pay-per-click links must exclusively monetize the complainant's trademark to support a finding of bad faith registration and use. On the other hand, UDRP panels require any evidence that a domain name is monetizing a trademark, even if the majority of pay-per-click links do not relate to the trademark.
A domain name resolving to a parking page consisting of pay-per-click links not all related to the complainant's business was not a clear-cut case of bad faith registration, a URS panel held in Heartland Payment Systems Inc. v. Whois Privacy Protection Service Inc., Nat'l Arb. Forum, FA1403001547394, 3/27/14.
The panel said that the parking page consisted of numerous “related links” that contained the word “Heartland” but bore no association to the HEARTLAND trademark. Other links did relate to the trademark, but the panel said that they appeared to be incidental.
Heartland Payment Systems Inc, one of the largest payment processors in the U.S., alleged that the registrant of the domain name, heartland.holdings, was monetizing the HEARTLAND mark.
A UDRP panel ruled that a domain name containing pay-per-click links not related to the trademark owner's business or its competitors still established bad faith because the registrant failed to explain why it selected a domain name confusingly similar to a well-known trademark (O2 Holdings Ltd. v. Profile Group, WIPO, D2013-1340, 9/12/13).
The panel acknowledged that a pay-per-click site is not illegitimate per se, but it found that the respondent's lack of explanation for its registration showed that it was using the domain name to deceive consumers into believing that it was affiliated with the trademark owner.
Complainant O2 Holdings Ltd, an IP holding company, alleged that the respondent registered the domain name, o24g.com, to attract users to its website through a likelihood of confusion with its trademark to generate pay-per-click revenue.
A domain name that redirected to the official website of Nissan Motor Co Ltd was not bad faith registration and use because the redirection was considered a tribute to the NISSAN mark and qualified as fair use, a URS panel held Dec. 23 in Nissan Motor Co. Ltd. v. Privat, Nat'l Arb. Forum, FA1412001593539, 12/23/14.
The panel said that the only evidence presented by the Complainant showed that the disputed domain name redirected to the Complainant's official web site, which in and of itself did not meet the clear and convincing standard. The redirection to the complainant's website may have shown knowledge of the trademark, but the knowledge alone was not sufficient to establish bad faith.
Evidence of redirection to show knowledge of a trademark was an indicator of bad faith under the UDRP's preponderance of the evidence standard in ehotel AG v. Network Technologies Polska Jasinski Lutoborski Sp.J., WIPO, No. D2009-0785, 8/5/09, where a domain name that redirected to the complainant's website constituted evidence of bad faith because it showed that the respondent was aware of the complainant's trademark when it registered its confusingly similar domain name.
The panel said that the registrant must have known the value in having the domain name to take advantage of its association with the trademark owner's business, and that redirecting the domain name to the trademark owner's website served to reinforce that association.
Complainant ehotel AG, owner of the federally registered trademark EHOTEL, discussed a potential agreement with the registrant of the domain name, ehotel.com, whereby online hotel reservations booked through the domain name would be forwarded to the complainant. For a period of three years, the domain name redirected Internet users to its website. After that period, the domain name began to redirect users to its own website.
The redirection to the complainant's website was an active endeavor to associate the domain name with the complainant's business for commercial gain, the panel said.
Weslow pointed out that redirection as the sole factor of bad faith may not always be sufficient under the UDRP, depending on the nature of the trademark. A complainant has a better chance of prevailing under the UDRP than under the URS, but would still probably need some other evidence of bad faith, he said.
On Feb. 2, ICANN issued a draft report assessing the effectiveness of the URS and other rights protection mechanisms established as safeguards for the new gTLD program. The report includes data from third-party service providers as well as user feedback through a public comment period.
ICANN is accepting comments until April 3. ICANN will update the report based on this public feedback and will have the final staff report completed by April 24.
To contact the reporter on this story: Alexis Kramer in Washington at firstname.lastname@example.org
To contact the editor responsible for this story: Thomas O'Toole at email@example.com
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