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More gTLD news - Brand protection with URS and the .brand effect

As the new extensions start to take off, new rules are coming into play, like the URS procedure. Also, a recent survey by the Afilias registry highlights issues around the launch of these new gTLDs. The ".brand" aspect will forever change the use of social networks by companies looking to promote their brands.

The Afilias survey was conducted during the last Digital Marketing and gTLD Strategy conference in London. Some of the results are startling. For instance, 83% of participants and industry experts surveyed believe that ".brand" type extensions such as <.lancome> or <.bnpparibas> will be more effective in reaching a wide audience than the relevant companies presence on social networks. The reason ".brand" pages are more effective is partly that they are safer: it's harder for third parties to create fake pages, which is often done with bad intent.

The results of this survey throw light on a recent URS procedural decision in Facebook's favor by the National Arbitration Forum, and also has consquences for the boom in new extensions, and how they will be regulated.

As previously reported on in the Gandibar, ICANN delegated the first new extensions last October, and has been updating procedures and processes to facilitate dispute resolution since then. If you own a brand, and want to protect it in the context of the new gTLDs, you should be familiar with the workings of one of these procedures, in particular: the URS (the Uniform Rapid Suspension) procedure. We will go over some of the details here. It's actually going to get even more difficult to protect your brand's reputation, especially after .sucks and .wtf are available! Read on...

So, URS... The URS procedure is reserved for new extensions and .PW domains, (the .PW extension is a ccTLD of Palau, Micronesia, and gets used for password related and "web professional" sites). In July 2013. the .PW registry offered to be a guinea pig for URS, and so is included as well. The main ideas of URS have been in play since 2009.

For the new gTLDs, then, URS replaces UDRP. It will be enforced by the National Arbitration Forum and ADNDRC, who signed a MoU with ICANN to do so. To bring a complaint under URS, the plaintiff must supply the information on which to base the claim, and document the goods and services for which the allegedly infringed mark is used, suppling evidence to support this use. This is in contrast to UDRP, which did not strictly require proof of use. For those lucky holders of a SMD (Signed Mark Data) file, who have successfully registered their trademark with the Trademark Clearinghouse (TMCH) this goes without saying, since registration with the TMCH requires the production of evidence of use. The argument of the plaintiff should not exceed 500 words, and has other requirements very much like those of the traditional UDRP complaint.

The complaint may be filed against a number of domains if they have the same owner. If a former URS or UDRP complaint is pending, a new URS can be filed, and it's easy to track the complaints on the database of the NAF. The cost for filing a complaint with the NAF for up to 14 domains under the same owner is $375. Appeals are possible.

The the Facebook decision concerned the domain "facebook.pw", and Facebook prevailed in its complaint, filed under URS. It was a clear case of infringement of trade mark rights. The Facebook board, namely member Hogan Lovells, had requested the suspension of the infringing domain by filing a complaint on August 21 before the National Arbitration Forum (NAF). The domain holder's use of the identical trademark in the domain name itself was deemed likely to cause confusion with the social networking site, and lack of legitimate interest on the part of the defendant was shown by their use of a parking page. Finally, bad faith was shown in the reserving the disputed domain, as the defendant was found to be a seasoned cybersquatter, who had registered multiple domains that were nothing more than typosquattings of well-known trademarks.

In summary, the URS procedure:
  • Applies to the disputed domain name itself, as opposed to the content hosted at a site under the domain
  • Is limited to clear cases of violation of trademark law
  • Requires evidence of the complainant's mark actually being used
  • Is administered by the National Arbitration Forum and ADNDRC
We hope you never have to use it, but now you at least know how, and what it is for. Good luck out there.