Uniform Rapid Suspension: an assessment one year on

The Uniform Rapid Suspension (URS) was developed by the Internet Corporation for Assigned Names and Numbers (ICANN) as part of its new generic top-level domain (gTLD) programme. The URS, which is now a year old, was designed as a rapid dispute resolution procedure and alternative to the longstanding Uniform Domain Name Dispute Resolution Policy (UDRP) for clear cases of domain name abuse. The first decision under the URS was Facebok.pw, which was issued in September 2013, although use really began in earnest in February 2014, when actions relating to the new gTLD registries began. At the time of writing in late September, more than 100 cases have now been decided, allowing us to begin to see trends and learn lessons – albeit with some difficulty given the brevity of the URS decisions.

ICANN has appointed two providers to hear URS cases: the National Arbitration Forum (NAF) and the Asian Domain Name Dispute Resolution Centre. The NAF service was the first to launch and to date has decided the majority of cases

ICANN has appointed two providers to hear URS cases: the National Arbitration Forum (NAF) and the Asian Domain Name Dispute Resolution Centre (ADNDRC). The NAF service was the first to launch and to date has decided the majority of cases – 98 compared to seven by the ADNDRC, most of the latter having been brought by Alibaba. Most cases have led to findings in favour of the complainant: all seven of the ADNDRC cases and 83 of the 98 NAF cases. In approximately half, the registrant filed no substantive response and the decision was made on the basis of the complainant’s submission alone – although this does not guarantee a finding in the complainant’s favour. Six cases were subject to appeals, of which five involved the registrant Yoyo.email, referred to in more detail below.

In the discussion below, all of the non-Alibaba cases referred to are from the NAF, unless otherwise stated. Since all decisions are published on the respective websites, full case references are not included, given space constraints.

The test for the URS is that there be clear and convincing evidence of the following grounds for the complaint:

• The domain is identical to or confusingly similar to a relevant word mark;
• The registrant has no legitimate right or interest to the domain name; and
• The domain was registered and is being used in bad faith.

Generally, the second and third of these grounds require the most consideration, and the same factual elements tend to impact on both – although in a handful of cases the claimant has failed at the first hurdle.

Failure to evidence entitlement to the mark

While in some cases the complainant generally failed to show that there was a trademark at all (eg, bas.graphics), the error is generally in failing to show that the complainant is the owner, rather than another group company. In the first action brought in respect of the domain ‘wolfram.ceo’, the complainant brought the claim in the name of Wolfram Research, whereas the trademark was registered to Wolfram Group. Since the URS procedure gives the complainant no opportunity to correct such errors, the only option is to pay a second fee and bring a new action in the correct name, which Wolfram duly did.

Comparison between mark and domain

In determining whether the domain name is identical to the mark, the TLD element (ie, the part after the dot) can be ignored, although in some cases this has been taken into account. For example, in uniqlo.house the fact that the claimant sold to household goods helped to demonstrate bad faith; and in hochtief.contractors the TLD ‘contractors’ was closely linked to the industry of the complainant, “thereby creating a natural assumption of a link to the Complainant’s company”. In Dana.holdings the examiner considered that the association of the word ‘holdings’ with the trademark tended to make confusion more likely, notwithstanding that ‘Dana’ is a common name.

The TLD element may also count against the complainant. In porsche.social the registrant claimed that it intended to create a free community for Porsche car enthusiasts, which would not be a bad-faith use. This was supported by the fact that the domain name was in the TLD ‘social’, together with the disclaimers on each page of the website.

ICANN’s president and CEO opens the ICANN meeting in Los Angeles, at which URS performance was discussed prior to a proper review. Picture courtesy of ICANN

Inferring bad faith

Notwithstanding the high burden of proof on the complainant, examiners appear willing to infer bad faith in cases where the trademark is longstanding and well known, and there are indications to suggest that the registrant was perfectly aware of the mark. For example, in the ADNDRC case michaelpage.careers the examiner concluded bad faith due to the following facts:

• The domain name had been registered several years after registration of the MICHAEL PAGE trademarks and many years after the Michael Page company had become well established and prominent;
• Those trademarks were recorded in the Trademark Clearinghouse, so the registrant had received a claims notice prior to registering; and
• The TLD in question – ‘careers’ – related to the complainant’s field of business, “raising the necessary inference that it is an official domain name of the Complainant that will lead to an official website of the Complainant”.

In the case concerning ‘alipay.technology’, ‘taobao.technology’ and ‘alibaba.technology’ the complainant had made an anonymous offer of $500 for each domain, which the registrant rejected. Alibaba sought to rely on this as evidence of bad faith, arguing that the registrant was seeking to recover more than its out-of-pocket expenses. The examiner was not persuaded. The anonymous nature of the offer did not demonstrate that the primary purpose in registering the domain names was to sell them to the complainant or to a competitor of the complainant, as required under the URS. Nevertheless, the examiner was satisfied that the bad-faith element had been met, since the registrant must have known of the three marks when it registered the domains and registering them all on the same day demonstrated a pattern of behaviour.

It is a ground of bad faith under the URS “that [the] Registrant has registered the domain name in order to prevent the trademark holder or service mark from reflecting the mark in a corresponding domain name, provided that [the] Registrant has engaged in a pattern of such conduct”. Examiners will take into account the number of domains held by the registrant and the number of other URS cases to which it has been subject (eg, see ‘oliverwyman.consulting’, against registrant ‘digiinno.com’ of Hong Kong). It seems rather a stretch in the above Alibaba cases to find that registering three domain names in the same TLD on the same day constitutes a “pattern of bad faith behaviour” per se; but the fact that these matched three well-known trademarks owned by the same company did negate any suggestion that they were innocently and independently selected.

It remains to be seen how willing examiners will be to infer prior knowledge of the trademark, and thus bad faith, where the domain was registered outside of the 90-day trademark claims period so that the registrant did not receive the claims notice before it completed the registration of its domain. However, the likelihood is that examiners will still infer knowledge of the mark where it is well known and distinctive.

Trading in names for profit and bulk sale of traffic

While there will be cases where the examiner is willing to infer that a pattern of behaviour demonstrates bad faith, this depends on the facts. In a case brought by IBM against North Sound Names in respect of ‘aix.link’ and ‘db2.link’, the registrant acknowledged that it had a number of domain registrations which were parked on pay-per-click sites, but argued that these names were part of a portfolio of three-character domains assembled primarily for sale to those seeking “short monogrammatic or acronymic domain names”. Relevant factors were the other third-party uses in commerce of the two marks and the fact that the landing pages contained no links – not even indirect ones – referencing the complainant. The complainant had therefore failed to establish that there was no legitimate right or interest to the names on the ‘clear and convincing’ standard and had also failed on the third ground, since the URS procedure specifically states that neither trading in names for profit nor sale of traffic is automatically evidence of bad faith.

In contrast, two cases against the same defendant – mittal.ceo and wolfram.ceo – found that the compilation of a large portfolio of names for sale was an indication of bad faith, even though the registrant did not appear to have targeted those trademark owners as purchaser or by the content of its links. It is somewhat difficult to reconcile these decisions, based on the brief judgments delivered in URS cases. However, in these latter two cases the trademarks were probably better known to a more general audience, being the trading names of international companies. The TLD ‘ceo’ may also have been an influencing factor – although this was not referred to in the decision.

The first decision under the URS saw Facebook succeed in its effort to suspend the ‘.facebok.pw’ domain name

Descriptive and generic terms and common names

A number of cases have involved names which, while validly registered as a trademark in a particular field, were also generic or descriptive terms which the registrant might have had a legitimate interest in using. The case involving the domains ‘principal.centre’ and ‘principal.services’ brought by Principal Financial Services Inc provides a good summary of the position here. The registrant also owned the domain ‘schoolprincipal.org’. As the examiner held: “In such cases, for the complainant to prevail, there must be some other proof to evidence bad faith, such as actual notice of trademark prior to registration ( FA1405001560028) or evidence of a pattern of registering domains using protected marks ( FA1203001435300)”. The examiner was also supported in his view by the UDRP decision in Zero Int’l Holding v Beyonet Servs (World Intellectual Property Oorganisation, May 12 2000), which found that “Common words and descriptive terms are legitimately subject to registration as domain names on a ‘first-come, first-served’ basis”. Thus, the examiner advised that “holders of protected marks which are also commonly used, generic terms should ensure prompt registration of their desired domains, as their trademarks, on their own accord, will not suffice to succeed on claims against legitimate registrants of such domain names”.

While this may be good advice in respect of domains that a trademark owner actually wishes to use, few are likely to have the budget to register in every TLD as a matter of course. The better option in such situations would be to take the more pragmatic approach of allowing time for the domain to be used and then consider action only where there is some clear evidence of actual bad faith on which to rely. Trademark rights, after all, do not grant the registrant exclusivity in respect of all uses in the offline world, so cannot be expected to do so online.

The finn.sexy and branson.guru cases failed to meet the higher burden of proof, given the potential fair uses and lack of targeting of the trademark owners. Perhaps one of the least convincing of these cases is that involving ‘bbva.land’, where the registrant successfully argued that it intended to provide agronomical engineering services to the towns of “Bellreguart, Beniarjo, Villalonga and Almoines” – this notwithstanding that the links on the registrant’s site (albeit apparently being served by the registrar) were related to the complainant’s industry. In other cases examiners appear to have been slightly more willing to reject claims by the registrant which seemed specious and unsupported by any real evidence.

In michaelpage.careers, although the domain pointed to a pay-per-click site, the registrant contended that this was not as a result of its own actions, but those of its registrar, GoDaddy, which was the party profiting from any use. The examiner was unpersuaded, noting: “The fact is that the respondent is responsible for advertising links appearing on the website to which its own domain name resolves”

Parking pages: non-use of domain?

Where the domain is parked, this will generally suffice to show use. In michaelpage.careers, although the domain pointed to a pay-per-click site, the registrant contended that this was not as a result of its own actions, but those of its registrar, GoDaddy, which was the party profiting from any use. The examiner was unpersuaded: “The Examiner finds that the domain name has not been left unused, as the evidence is that Go Daddy has been using it to carry advertising links and, although this is a common practice of registrars, the fact is that the Respondent is responsible for advertising links appearing on the website to which its own domain name resolves.”

Failure to file response

In case of default the domain name will not be suspended automatically; the case must still go to an examiner to determine whether the complainant has proved its case to a clear and convincing standard. Nevertheless, most examiners tend to find for the complainant in these cases and infer the necessary bad faith, at least where the trademark is well known, widely registered and not a generic term which might conceivably have other legitimate uses. As the examiner said in a case involving ‘tao.email’ and ‘taobao.email’: “Without the Respondent’s explanation for the registration, it is impossible to know why he chose to register these domain names. The only explanation of what has happened seems to be that the Respondent’s motive in registering and using the website was and is to disrupt the Complainant’s relationship with its customers or potential customers, attempt to attract Internet users for potential gain or persuade the Complainant to buy the disputed domain name from him for an amount in excess of the Respondent’s out-of-pocket expenses. These all constitute evidence of registration and use in bad faith.”

However, a complainant cannot simply assume that all default cases will go in its favour and that it has no need to make a case. In rmit.education RMIT University established that it had the necessary trademark rights but, according to the examiner, it failed to submit any evidence for the second or third elements of the claim. The claim was therefore refused, notwithstanding that the TLD ‘education’ was directly related to the complainant’s area of activity.

Examiners sometimes have to be willing to overlook procedural irregularity on the part of an unrepresented registrant in order to ensure a fair hearing. Rule 8 of the URS Rules allows the examiner a certain amount of discretion as to the admissibility and weight of the evidence, and this was relied on by the examiner in michaelpage.careers to admit an email from the registrant, despite this being late, not complying with the formal requirements for a response and breaching Rule 7, since the registrant corresponded directly with the examiner. Nevertheless, the complainant succeeded and the domain was suspended.

Conversely, in the action brought by Biersdorf against registrant Yoyo.email, the examiner refused to overlook irregularities as to format and word count in the response and treated the case as unopposed (although he did then still consider the contents in the interests of justice). However, it is clear that the examiner took into account the large number of other actions which had been brought against Yoyo.email and that this was not its first non-compliant response.

Actions against Yoyo.email

To date, 10 decisions involve the UK registrant Yoyo.email, which has registered a large number of domains incorporating brand names within the ‘.email’ TLD, including Lufthansa, eharmony and stuartweitzman. Five cases have subsequently gone to appeal. While eight of these cases have led to suspension of the domain and this has been denied in only two, Yoyo.email demonstrates the challenges of the URS for a complainant.

The registrant generally acknowledges the trademark rights of the complainant, but claims that its proposed use will not create a likelihood of confusion with those marks and argues that it will be making legitimate fair use without any intention of commercial gain, misleadingly diverting consumers or tarnishing the trademark. Allegedly, the registrant intends to offer the domain names for free in order to operate a recorded delivery service and/or reply monitoring system for email traffic, driven by its neutral communication platform attached to the Yoyo email system. The registrant claims that the acquisition of the branded domain names is necessary to start building up a directory of companies which “would value having access to the system so that as well as the system recording if an e-mail had been received” by, for example, the complainant, “the company itself could use the system to have recorded that it had sent an email out that had arrived on the date and time in question”.

In the first case, lufthansa.email, the examiner was not persuaded by the registrant’s proposed business model, taking the view that the registrant had not presented evidence of demonstrable preparations to use the domain name in connection with a genuine offering of goods or services, but merely described its intentions. This was considered insufficient to overcome the circumstances demonstrated by the complainant and the domain name was suspended.

On the subsequent appeal, the examiners found that they had no reason to doubt the claims made by the registrant as to its proposed business model, whereby the domain name was intended to be used for free by the complainant or its customers for an email-forwarding service. For the examiners, while such free-of-charge use might be considered as a more technical and non-commercial use of the domain name that may, under some circumstances, be seen as a legitimate interest, the evidence submitted by the registrant nevertheless tended to belie the claim that it had no intention to make commercial gain. The business had up to 10 employees, “a lot of money” had been spent on it so far and it was important to build up a directory of large companies such as Lufthansa, as the intention was to “make money by the value of having large numbers of active uses”, by charging for connected social media and connected advertising. Regardless of the intent, therefore, the use of the famous trademark in the domain name would misrepresent to internet users that the domain name belonged to or was approved by the complainant. Registering such a domain name with the specific goal of earning money from active users and advertising could not be a legitimate interest.

One of the three examiners expressed the dissenting view, however, that the case could not be considered suitable for the URS as the registrant had raised significant questions of fact to refute the claim of bad-faith registration: “As noted in URS Procedure §8.5, ‘[t]he URS is not intended for use in any proceedings with open questions of fact, but only clear cases of trademark abuse.’ In my opinion, the evidence does not establish a ‘clear case[] of trademark abuse’ especially when viewed in the context of the ‘clear and convincing’ burden of proof.” In particular, the registrant had made a “convincing enough argument” that it needed to use the disputed domain name for its proposed service and did not have the requisite intent to misleadingly divert consumers. On appeal in the subsequent case footlocker.email, the same examiner again expressed this dissenting view.

In stuartweitzman.email the complainant succeeded initially, but the decision was reversed on appeal since the registrant had made no reference in its response to the more commercial aspects of its proposed business and the intent to monetise, as set out in more detail in some of the other cases, including Lufthansa.email. This was so even though the appeal examiner specifically referred to those other cases and was therefore aware of the proposed business model.

The second case in which the complainant was refused, ‘eharmony.email’ decided on September 4 2014, appears to have been based on a similar consideration to the Lufthansa dissenting view. The examiner gave no express explanation for his decision that the complainant had not established the necessary bad-faith element. However, in this case the registrant submitted a copy of his recent lawsuit brought in the Arizona District Court in respect of the unrelated domain name ‘playinnovation.email’, the subject of another URS decision (Yoyo.Email, LLC v Playinnovation, LTD, US District Court for the District of Arizona, Case CV-14-01922-PHX-PGR filed August 29 2014). In that lawsuit Yoyo is seeking a declaration that its proposed service is legitimate and contends that:

• it does not intend to use the domain name as a web address or to host a website;
• it has not made the domain name visible to the general public; and
• it has not used the domain name to monetise its service to users or the trademark owner.

The existence of such a lawsuit appears to have been accepted by the examiner as demonstrating a genuine contestable issue as to bad faith.

The Yoyo.email cases thus sum up one of the major limitations of the URS from a trademark owner’s perspective – the URS is intended only for clear cases of trademark abuse and not those where there are open questions of fact. Having raised an “arguable” defence of good-faith use based on its proposed business model it is perhaps surprising that more of the early URS cases did not fall at this hurdle. This does suggest that some, but not all, examiners are willing to discount a defence which seems barely credible, resulting in a level of uncertainty for complainants. In the words of dissenting Examiner Samuels in Lufthansa.email: “Whether Complainant supports such a service or believes it is technically or commercially viable seems to me to be beside the point.” In contrast, all 12 UDRPs against Yoyo.email have resulted in transfer of the 18 domains.

Conclusion

While many trademark owners are reluctant to use the URS because the available remedy is limited to suspension of the domain name and not its transfer, the URS is shaping up to be a useful additional weapon in the trademark owner’s armoury where transfer is not required. Cases are decided quickly – generally around 20 days from filing – many are undefended and the majority, defended or not, are leading to the suspension of the domain name in question. Nevertheless, it is not suitable for every case. Those involving generic terms and common names will require something extra to tie them to the trademark owner if they are to succeed, while Yoyo.email shows the challenges where the registrant raises sufficient doubt about its intentions that there are open questions of fact. The URS is not, and never was, intended for cases which are not clear cut and this is being demonstrated by these decisions. However, most of the cases which have been brought do fall into this clear-cut category.