Trevor Little

In the largest URS decision to date, the National Arbitration Forum (NAF) has suspended 474 domains using marks owned by Ashley Furniture Industries (AFI). The decision comes at a time when the URS, alongside other rights protection mechanisms (RPMs), is under review, with brand owners being urged to act now to shape the online enforcement environment of tomorrow.

On December 21 2016, in Ashley Furniture Industries v Fahri Hadikusuma (claim number: FA1611001703352), NAF panellist Flip Petillion handed down the decision, which focused on 474 ‘.xyz’ domains. AFI uses the ASHLEY, ASHLEY FURNITURE and ASHLEY FURNITURE HOMESTORE marks for manufacturing and selling furniture. Having been alerted to domains using the marks, which resolved to the same registrar parking page and were registered by Indonesian-based Fahri Hadikusuma, AFI lodged its complaint. The respondent defaulted, leaving the panellist to make the determination.

First, the examiner noted that the disputed domain names were all confusingly similar to the complainant’s registered trademark, as they all incorporated the ASHLEY mark alongside generic and/or geographic terms. Considering whether the registrant has a legitimate right or interest to the domain name, the respondent did not submit any evidence and, absent this, the examiner found that the second element required to obtain the suspension of a domain name under the URS had been proven for all disputed domain names. Turning to whether the domains were registered in bad faith, it was noted that the passive holding of a domain name can constitute bad faith registration and use, and stated: “It is inconceivable to the examiner that [the] respondent was unaware of [the] complainant and its trademark rights when it registered the disputed domain names which are confusingly similar to Complainant’s ASHLEY trademark. Respondent registered and is passively holding 474 domains containing the ASHLEY trademark combined with descriptive and/or geographic terms which are often directly related to Complainant’s business… Moreover, given the number of disputed domain names, [the] examiner finds that [the] respondent has engaged in a pattern of domain name registrations in order to prevent the complainant from reflecting its mark in corresponding domain names.”

Based on the above, Petillion determined that AFI had met all three requirements of the URS and ordered the suspension of the domains. While it remains to be seen if other such URS actions follow, the victory illustrates how effective the URS can be as an alternative, cheaper and speedier remedy to the UDRP in certain circumstances (while taking a little longer than typical URS determinations – presumably due to the sheer number of domains involved – at three weeks from complaint to decision it still beat the average UDRP timeframes).

The decision also comes at a time when RPMs in the new gTLD space are under increasing scrutiny, with ICANN undertaking a review of the effectiveness and impact of the URS, Trademark Clearinghouse (TMCH) and Post-Delegation Dispute Resolution Procedure (with a view to ascertaining whether the offerings fulfil the purposes for which they were created).

This ongoing review is focused on ICANN-mandated RPMs but in some instances registry’s have launched their own offerings for brand owners. One is Donuts’ Domains Protected Marks List (DPML), which allows brand owners that have submitted their marks to ICANN’s Trademark Clearinghouse to block any registrations of second-level domains in a Donuts-operated string that match, or contain matching versions of, their marks for a single fee. The original cost was $3,000 for a five-year block across all the strings it operates, and in September the company unveiled an enhanced DPML, which allows trademark owners to protect their marks and related terms across all of Donuts' new generic top-level domains for a suggested retail price of $9,999 (for a 10-year block). The enhanced version was to be available for just three months, with the cost for the legacy version due to also rise this month. However, the company has announced that the DPML Plus will remain available until the end of March, while legacy process remain frozen until the end of this month.

The legacy product has proven successful for Donuts, which recently told ICANN’s Review of all Rights Protection Mechanisms (RPMs) in all gTLDs PDP Working Group that it registers an average of 125 sunrise names per TLD and has additionally “registered thousands of DPML blocks”. Given the costs involved it remains to be seen whether the enhanced service attracts as many subscribers but – as we reported previously – the successful launch of the DPML is held as an example to ICANN (which previously rejected a blocking mechanism for marks across new gTLDs) that the concept works.

As ICANN continues its reviews in preparation for the next round of new gTLDs, such mechanisms will be debated further by the community and will likely be a point of some discussion alongside the current ICANN review. To this end, writing in issue 71 of the INTA Bulletin, Mayer Brown’s Brian J Winterfeldt and Griffin M Barnett called on brand owners to step up their engagement in the process.

Warning that some members of the community are seeking changes that could weaken the TMCH (with suggestions including heightening the requirements for demonstrating substantial use of a mark in commerce and protection for only fanciful marks), they urge that support is required to both “push for needed improvements” and to “thwart concerted efforts to weaken these mechanisms”. They conclude: “Increased participation is critical, not only to preserve and enhance the TMCH and Sunrise mechanisms, which have been the subject of ongoing discussions, but also with respect to future discussions regarding Trademark Claims services, the URS process, and – perhaps most critically of all – with respect to the UDRP, which has been the touchstone of online brand protection in the DNS for well over a decade.”

This year could prove an important one for shaping future online trademark protection mechanisms. Many brand owners have not yet engaged in the ICANN world, perhaps because they have not yet been spurred to action or been directly impacted by brand protection challenges in the expanded online world, or just because they feel frustration with the fallout of the new gTLD programme or what is reported on the inner workings of the ICANN world. However, discussions over the next 12 months will play a significant role in shaping the online brand protection ecosystem. Whether direct, through ICANN’s RPM Review Working Group or via associations like INTA, 2017 is a year that offers an opportunity to tangibly shape the very mechanisms that will be relied on by brand protection professionals in the coming years. 


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