IBM wins first new gTLD URS case

IBM has been successful in the first ever decision under the Uniform Rapid Suspension (URS) system against domain names registered using new generic top-level domains.

The URS is a new dispute resolution mechanism developed as part of the new top-level domains programme. The URS is designed to be a quicker and less expensive complement to the existing Uniform Domain Name Dispute Resolution Policy (UDRP) and allows for the temporary suspension of domain names that infringe a trademark owners’ rights.

The respondent had registered the domain names 'ibm.guru' and 'ibm.ventures' on January 31 2014 and arranged for the domain names to redirect to IBM’s website at 'ibm.com'. The respondent will have paid in the region of $2,500 to register the domain names, as they were registered during the relevant registries’ 'Early Access Programs'.

IBM filed a URS complaint with the National Arbitration Forum regarding the domain names on February 5 2014. The National Arbitration Forum’s panel handed down its decision on February 12 2014 and, unsurprisingly, found in IBM’s favour. Interestingly, the panel held that the respondent’s receipt of a Trademark Claims notice prior to registration (informing him that the domain names matched a trademark included in the Trademark Clearinghouse) demonstrated that the respondent knew of the existence of IBM’s trademark at the time of registration.

The panel therefore ordered that the domain names be suspended, and they now redirect to a placeholder website which states that they have been taken down as a result of a complaint under the URS.

The panel’s decision was notable for its speed and shows that the URS lives up to the inclusion of 'rapid' within its name. Handed down just seven days after IBM filed its complaint, the decision demonstrates the ability of the URS to offer trademark owners a much quicker remedy than the familiar UDRP (it usually takes two months from the filing of a UDRP complaint to the issue of a decision).

The panel’s comment that the Trademark Claims notice is evidence that the respondent was aware of the trademarks at the time of registration serves as a practical example of one of the benefits of submitting trademark details to the Trademark Clearinghouse.

Martin Henshall, Edwards Wildman Palmer LLP, London