URS respondent shoots himself in the foot

International

In a recent domain name dispute brought under the Uniform Rapid Suspension System (URS) before the National Arbitration Forum, a panel has ordered the suspension of a domain name under the ‘.online’ new generic top-level domain (gTLD) following the registrant's filing of a response after a default determination ordering the suspension of the domain name.

The ‘.online’ new gTLD is one of the many new gTLDs recently launched by the Internet Corporation for Assigned Names and Numbers (ICANN) and, according to the registry, it purports to create "a memorable web identity that declares that you are ALIVE on the Internet to connect with your customers, partners & everyone online". ‘.online’ stands for "being connected on the Internet" according to the registry. It was delegated into the root on March 16 2015 and became available for general registration following a sunrise period for trademark holders that opened on June 18 2015 and closed on August 17 2015. ‘.online’ domain name registrations have been rapidly increasing since the ‘.online’ new gTLD became available for general registration, with currently over 80,000 domain name registrations. 

The URS is a rights protection mechanism originally designed to provide a faster, cheaper alternative to the Uniform Domain Name Dispute Resolution Policy (UDRP) for clear-cut cases of cybersquatting under the new gTLDs. Although the substantive requirements of the URS are very similar to those of the UDRP, the URS imposes a heavier burden of proof on the complainant as the standard is "clear and convincing evidence", as opposed to the traditional "preponderance of the evidence" (or "on balance"). However, unlike the UDRP, the only remedy available is the suspension of the domain name in question for the remainder of the registration period (which may be extended for an additional year), as opposed to the transfer or cancellation of the domain name, which are remedies available under the UDRP. At the end of the registration period, however, the domain name will be allowed to lapse and may be snapped up by a third party.

In the case at hand, the complainant was Skechers USA Inc, a footwear company based in California, United States, founded in 1992. The complainant was the owner of several trademarks containing or consisting of the term ‘Skechers’, used in connection with footwear. Its main website is available at ‘www.skechers.com’.

The respondent was Dijksman Holding of The Hague, International, Netherlands. No other details about the respondent were known.

The disputed domain name was ‘skechers.online’. It was registered by the respondent on September 6 2015 and was resolving to a registrar parking page containing sponsored links.

On September 14 2015 the complainant filed a URS complaint to obtain the suspension of the domain name. The proceedings commenced on September 15 2015. The respondent failed to respond within the 15-day period and so a default determination was delivered on September 30 2015, in accordance with the URS Rules and Procedure.

To be able to obtain the suspension of a domain name under the URS, a complainant is required to prove each of the following three elements:

  1. The domain name is identical, or confusingly similar, to a word mark:

(a) for which the complainant holds a valid national or regional registration and that is in current use;

(b) that has been validated through court proceedings; or

(c) that is specifically protected by a statute or treaty in effect at the time the URS complaint is filed; 

  1. the registrant has no rights or legitimate interests in the domain name; and 
  2. the domain was registered and is being used in bad faith.

The first requirement under Paragraph 1.2.6.1 of the URS requires a complainant to submit evidence of valid trademark rights. In addition, a complainant must submit proof of use of said trademark, whether by submitting evidence that the trademark has been validated by the Trademark Clearinghouse (a central repository created by ICANN) or by submitting direct proof of use.

The examiner was satisfied that the complainant had valid trademark rights which were in current use in accordance with Paragraph 1.2.6.1 of the URS. In addition, the examiner found that the domain name was identical or confusingly similar to the complainant's trademark. The examiner therefore found that the complainant satisfied the first requirement under the URS.

Turning to the second requirement under Paragraph 1.2.6.2 of the URS, the complainant was required to demonstrate that the respondent had no rights or legitimate interests in the domain name. The respondent failed to respond and so it was unable to rebut the complainant's prima facie case of lack of rights or legitimate interests. The examiner noted that there was no evidence that the respondent owned a trademark that was identical or similar to the domain name, or that is was affiliated to, or authorised by, the complainant to use its trademark. The examiner also noted that the respondent's use of the domain name for a parking page was not a good-faith offering of goods or services or a legitimate non-commercial or fair use of the domain name. The examiner therefore found that the complainant satisfied the second requirement under the URS.

Finally, the URS requires a complainant to demonstrate both registration and use of a domain name in bad faith, like the UDRP. Furthermore, like the UDRP, the URS also sets out a similar set of non-exhaustive circumstances that may be indicative of bad-faith registration and use, including paragraph 1.2.6.3.(d) of the URS, namely that:

(d) By using the domain name the registrant has intentionally attempted to attract, for commercial gain, internet users to the registrant’s website or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the registrant’s website or location or of a product or service on that website or location.

The examiner noted that the complainant had actively used its trademark and had also registered it with the Trademark Clearinghouse before the respondent’s registration of the domain name, and so the examiner found that the respondent should have received notice of the complainant’s rights at the time of registration. In addition, the examiner found that there were no known circumstances on which the respondent was able to rely to refute a claim of bad-faith registration or bad-faith use. The examiner thus found that the respondent registered and used the domain name in bad faith. The examiner therefore found that the complainant satisfied the third requirement under the URS, and ordered the suspension of the domain name.

One of the distinctive features of the URS, however, is that, in an attempt to bring balance and protect due process rights, it contains a provision that provides that, in default cases decided in favour of the complainant (such as the present case), the respondent will have an opportunity to file a response any time up to six months after the date of the notice of default, and may be entitled to request an extension of an additional six months (Paragraph 6.4 of the URS). However, if the response is filed more than 30 days after the default determination, the respondent will be required to pay a re-examination fee set forth by the provider (Paragraph 5.2 of the URS). If, after re-examination, the examiner rules in favour of the respondent, then the respondent will recover full control over the domain name registration (Paragraphs 6.4 and following of the URS). It should be noted, however, that the URS expressly provides that the filing of a response after a default determination is not an appeal; rather, the case is considered as if the respondent had filed in a timely manner.

In the present case, the respondent filed its response on October 8 2015, after the examiner had ordered the suspension of the domain name in its default determination. The same examiner was required to consider the respondent's response as if it was filed in a timely manner and review the three criteria set out above in order to deliver a final determination, in accordance with the aforementioned provision.

The examiner first found that the complainant had satisfied Paragraph 1.2.6.1 of the URS. Turning to Paragraph 1.2.6.2, the examiner found that the respondent did not provide any evidence of rights or legitimate interests in the domain name for the same reasons cited in the default determination and so the examiner found that the complainant had satisfied the second requirement under the URS.

Regarding Paragraph 1.2.6.3, the examiner noted that the respondent's reply in response to the claim of registration and use in bad faith was “No way!”, without any arguments or explanation. In addition, the examiner noted that the respondent had requested a "reimbursement of costs” in the amount of €1,400 in exchange for the transfer of the domain name. The examiner found that the respondent's request was "disproportional to the costs directly related to registering and/or maintaining the domain name" and that it confirmed that the respondent had registered and used the domain name in bad faith. The examiner therefore found that the complainant had satisfied the third requirement under the URS.

The examiner thus found that the complainant had demonstrated "by clear and convincing evidence" that all three elements of the URS were met and ordered the suspension of the domain name for the remainder of its registration period in its final determination. The website (www.skechers.online) must display a banner stating "This Site is Suspended" with the text "The Domain Name you’ve entered is not available. It has been taken down as a result of dispute resolution proceedings pursuant to the Uniform Rapid Suspension System (URS) Procedure and Rules" and a link to the URS page on ICANN's website. The WHOIS, however, will continue to display the information of the respondent (except for the redirection of the name servers) for the remainder of the registration period.

This decision is one of the few instances in which a respondent has filed a response after a default determination. Whilst allowing a respondent to file a response for up to a year after the notice of default may be one of the drawbacks of the URS from a complainant's perspective, such cases are rare (most likely as respondents are required to pay a re-examination fee of approximately $200 if they file a response more than 30 days after a default determination) and are unlikely to succeed.

The decision also highlights how the URS is proving itself to be a quick and cost-effective mechanism for trademark holders to tackle infringing domain names, even though the only remedy is the suspension of the domain name in question. The URS, however, is intended for the most clear-cut cases of cybersquatting and so domain name disputes involving more complex issues (such as fair use) are better suited to the UDRP. Thus the choice of whether to file a complaint under the URS or the UDRP should always be carefully considered, taking into account various factors including urgency, costs and potential defences.

David Taylor and Soraya Camayd, Hogan Lovells LLP, Paris

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