Have Trademark Holders Given Up On The URS? Last 17 Disputes Filed, 15 Were UDRP’s

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Have trademark holders given up on the Uniform Resolution Service?

The URS is something that trademark holders and their representative pushed for at ICANN for years.

A cheap, quick take down on obviously trademark infringing new gTLD domain registrations.

Although the URS is exactly that a much cheaper and quicker process than a UDRP, if a trademark holder wins a URS the domain registration is simply suspended for the term of the registration and becomes available for re-registration once it drops.

Since June 15th, 26 UDRP have been filed on new gTLD domain names while only 6 URS have been filed.

The last URS was filed on June 30 on the domain name marmara.club and the one before that on June 26th on the domain name ibm.xn--3ds443g. Since June 26th, 15 UDRP’s were filed.

It looks like trademark holders are for the moment opting for filing UDRP’s in lieu of URS

Here are the UDRP filed on new gTLD’s from June 15, 2014:

D2014-1172 garnier.email, kiehls.email L’Oréal SA

D2014-1171 geforce.graphics NVIDIA Corporation

D2014-1167 walmart.reviews Wal-Mart Stores, Inc.

D2014-1145 sanofi.email Sanofi

D2014-1138 clarins.center CLARINS

D2014-1144 uniqlo.clothing Kabushiki Kaisha Fast Retailing, dba Fast Retailing Co., Ltd.,

1567649 corninggorilla.glass

1567719 vivintsolar.solar

1564630 vanheusen.clothing

1564059 kohler.plumbing

D2014-0999 clarins.club Clarins

D2014-1116 kpn.international Koninklijke KPN N.V.

D2014-1102 electrolux.company Aktiebolaget Electrolux

565523 aeo.xyz

D2014-1091 lonelyplanet.photography Lonely Planet Global, Inc.

D2014-1083 osram.lighting OSRAM GmbH

D2014-1077 petrobras.guru Petroleo Brasileiro S.A. Petrobras

D2014-1075 petrobras.holdings Petroleo Brasileiro S.A – Petrobras

D2014-1076 petrobras.technology Petroleo Brasileiro S.A – Petrobras

D2014-1054 sheraton.caB Sheraton International IP, LLC Starwood Hotels & Resorts Worldwide Inc. The Sheraton LLC –
D2014-0698 statoil.today Statoil ASA (“Statoil”)

D2014-1040 stregis.club, westin.club, whotels.club Starwood Hotels & Resorts Worldwide, Inc.

D2014-1038 oshkoshbgosh.clothing OshKosh B’Gosh, Inc

D2014-0434 stihl.equipment Andreas Stihl AG & Co KG

D2014-0576 stihl.ceo Andreas Stihl AG & Co KG

D2014-1029 docmarten.clothing “Dr. Maertens” Marketin

About Michael Berkens

Michael Berkens, Esq. is the founder and Editor-in-Chief of TheDomains.com. Michael is also the co-founder of Worldwide Media Inc. which sold around 70K domain to Godaddy.com in December 2015 and now owns around 8K domain names . Michael was also one of the 5 Judges selected for the the Verisign 30th Anniversary .Com contest.

Comments

  1. Joseph Peterson says

    Old habits die hard?

    Lack of awareness?

    Looking for a more permanent solution? … since (as you mention) URS only knocks the offending domain out of the registrant’s hand.

    Hoping to deter bad actors by dragging them into costlier legal proceedings?

    Or upselling UDRPs brings in larger legal fees than URS filings?

    I have no idea.

    Hoping somebody will ask those concerned about their decisions to pursue UDRP rather than URS …

  2. pscorwin says

    Good observations, Michael.

    I wrote on this subject recently at the ICA website, in an article recounting my experience at the INTA Annual meeting held in Hong Kong in May — http://www.internetcommerce.org/black-rain-and-trademark-policy/ :

    ” It became clear that many of the trademark experts in attendance were just beginning to focus on the new gTLD program, despite clear notice of its impending arrival and the availability of new rights protection mechanisms (RPMs) consisting of the Trademark Clearinghouse (TMCH) and Uniform Rapid Suspension (URS)… Many rights holders appeared to be passing on TMCH registrations because they had little interest in making large numbers of defensive “sunrise” registrations at new gTLDs. Complaints were heard that the URS was unattractive because it involved perpetual monitoring of suspended domains that could later be re-registered, and that the UDRP was too slow and expensive to scale to the new world. Session attendees were reminded that ICANN would be conducting an initial review of the efficacy of the new RPMs in 2015, and that review of the UDRP would also commence next year – and were urged to document how they used the new RPMs and what their total defensive costs stemming from new gTLDs added up to…Trademark owners are justifiably chagrined that a URS action only suspends a clearly infringing domain for its remaining registration period, leaving it available for re-registration and the need for a follow-up URS filing — while domain investors don’t want a domain transfer option out of equally justifiable concern that the URS could become a low-cost means of reverse domain name hijacking (RDNH). One possible reconciliation would be to amend the URS so that a lost domain is permanently barred from being reregistered. That would alleviate domainers of their hijacking concern – and take a clearly infringing domain out of circulation with no continuing defensive registration costs for the rights holder.”

    Just about every domain you list is an exact match of a widely recognized non-generic trademark, and its registration would be infringing by anyone by the rights holder. It looks to me like these trademark owners have decided against proactive defensive registrations (or use of something like the Donuts DPML) in favor of bringing UDRPs to assure that the offending domain is not available for re-registration. Domainers do not want the URS to generally have a transfer option and become a $500 UDRP, so I’ll be asking ICA members — including you — what they think about other alternatives when the URS comes up for ICANN review.