First case for the URS system: a successful prospect for trademark holders

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The first case implementing the Uniform Rapid Suspension system, created at the same time as the new gTLDs, has just been rendered. IBM is the lucky winner after having filed a complaint against a third party who tried to reserve ibm.guru and ibm.ventures, on 31 January 2014, and having had the domain names redirected to IBM’s official website (www.ibm.com).

The benefits of the URS system are both time- and cost-effective compared with the existing UDRP; the main difference is that the UDRP entitles trademark holders to have the disputed domain name directly transferred, whereas the URS system only allows for suspension of the domain name. In terms of rapidity, the system has proved its efficiency, since the National Arbitration Forum rendered its decision in only seven days – against the average two-month period under the existing UDRP! IBM filed its complaint on 5 February 2014 and the decision was handed down on 12 February 2014, with recognition of the third party’s bad faith.

IBM had filed its trademark in the TMCH, and in this way, it received notice of the reservation of the two domain names in .guru and .ventures. The same notice was received by the third party, who had to click to acknowledge safe receipt of this alert. This click evidences the acknowledgement by the third party of the existence of a prior trademark and, by continuing the reservation procedure, bad faith is characterised since it proves that infringement of a trademark is made in full knowledge of the issue.

Furthermore, IBM also registered its trademark in the programme launched by Donuts, a company managing more than 300 projected new extensions, in order to appear in the Domains Protected Marks List (DPML), which will enable it to get back automatically the challenged domain names, ibm.guru and ibm.ventures, on their expiry date. This case therefore illustrates the benefits of having your trademark registered in the TMCH and is one of the reasons why we recommend you to register your trademarks in the system.

Published In: Communications & Media Updates, Intellectual Property Updates, Science, Computers & Technology Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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