In 2012, the new generic top-level domains (new gTLDs) program was launched to expand the existing top-level domains (prior to this, only 22 TLDs such as .com, .net, .asia, .org, etc were available).
New gTLDs can include Chinese characters such as 游戏 (Chinese for "game(s)”), 公益 (Chinese for "charity") and non-Roman characters such asみんな (Japanese for "everyone"), شبكة (Arabic for "web/network"), сайт (Russian for "site"), 삼성 (Korean for "Samsung/Samseong"). English words such as .HOLDING, .CLOTHING, CHURCH, .LAWYER, etc. and famous brands such as .IBM, .YOUTUBE, .GMAIL, etc. are also allowed under the new gTLDs program.
As you may know, domain names can easily be registered by cybersquatters with a view to selling the domain to the true owner or profiting from its use, a new system to deal with domain name dispute regarding these new gTLDs called Uniform Rapid Suspension System (“URS”) has been introduced complemented with the traditional dispute route under Uniform Domain Name Resolution Policy (“UDRP”).
Under URS, the complainant is required to prove the following three elements, namely:
- The registered domain name is identical or confusingly similar to a word mark: (i) for which the Complainant holds a valid national or regional registration and that is in current use; or (ii) that has been validated through court proceedings; or (iii) that is specifically protected by a statute or treaty currently in effect and that was in effect at the time the URS Complaint is filed;
- The Registrant has no legitimate rights or interest in the domain name; and
- The domain name was registered and is being used in bad faith.
(See Rule 8.1 of Uniform Rapid Suspension System Procedure, Source : Asian Domain Name Dispute Resolution Centre)
URS aims to provide a cost effective (the filing fee is US$360 for 1 to 5 domain names as opposed to US$1,300 under UDRP) and timely (decision is normally available within 1 month) route to help the brand owners to dispute the domain names (registered with the new gTLDs) if their trade mark rights are prejudiced by these domain names.
The case under URS will be established if the complainant is able to show clear and convincing evidence (higher standard of proof as opposed to normal civil standard of proof (balance of probabilities) under UDRP) in respect of the above 3 elements.
The dispute complaint can be filed with one of the two appointed service providers, namely National Arbitration Forum (“NAF”) and Asian Domain Name Dispute Resolution Centre (“ADNDRC”).
The first case decided by NAF under URS was “facebok.pw” (pw stands for “Professional Web”) a domain dispute filed by Facebook Inc. against Radoslav Stach, the Registrant of the disputed domain. (Please see http://domains.adrforum.com/domains/decisions/1515825D.htm for full decision)
Whereas the first case decided by ADNDRC was “michaelpage.careers” filed by Michael Page Recruitment Group Limited against the Respondent, Tassanee Atsawasakundee, KTI Recruitment Consultants Co. Ltd. (please see http://www.adndrc.org/diymodule/URS_decisionView.php?num=00013&caseid=HKS-1400001 for full decision)
The only remedy available under the URS is the suspension of the domain name for the duration of the registration of the dispute domain. When accessing the disputed domain after decision under URS is made against the registrant, a notice to inform the public that the said domain name was suspended will be shown as follows:
Under the UDRP, other remedies are available such as cancellation of the disputed domain name or transfer of the domain name to the trade mark owner.
For some domain names, the trade mark owner may not wish to use them, e.g. facebok.pw, then URS may be suitable as a resort to stop this domain from operating for the duration of its registration term. However, the disputed domain name may be registered by other party once the suspended domain registration lapsed.
On the contrary, if the disputed domain name may be of use to the trade mark owners, then UDRP may be more appropriate so that the disputed domain could be transferred to the trade mark owner for their own use.
URS is designed to deal with cut-clear case where the above 3 elements can be established by the trade mark owner while UDRP will still be of help to the trade mark owners if they could only show the 3 elements on the balance of probabilities.
How can OLN assist?
OLN and our Intellectual Property team in Hong Kong and Shanghai can assist you with all your domain name matters and intellectual property issues and in particular, registering your domain name and handling domain name dispute resolutions in Hong Kong and China.
This article is for information purposes only. Its contents do not constitute legal advice and readers should not regard this article as a substitute for detailed advice in individual instances.