This post was written by Brad R. Newberg.
In the first of what are likely to be many Uniform Domain-Name Dispute-Resolution Policy (UDRP) and Uniform Rapid Suspension (URS) cases related to the new gTLD program, CANYON.BIKE was transferred to Canyon Bicycles GmbH of Koblenz, Germany. This seems to have been a relatively easy decision for the arbitrator, since the Respondent’s defense was “that he registered the disputed domain name to enlarge his network and ‘get in (friendly) contact with Canyon.’ The Respondent submits that a lot of people in the cycling industry did not know of the forthcoming new gTLDs and he therefore registered some domain names ‘to protect companies’ from domain squatting. The Respondent adds that before he was able to contact the Complainant it filed the present Complaint.” The Respondent made this claim even though he was seeking money from the trademark owner for the domain name, and had advertisements at the domain name for the trademark owner’s competitors.
As Reed Smith reported in a case study on .BIKE last month, the majority of bicycle brand names registered in the .BIKE gTLD appear to have been registered by cybersquatters as opposed to the owners of the trademarks themselves. Similar results have been found when examining .CLOTHING and others.
Given the very high incidence of cybersquatting in the new gTLDs, it will be interesting to see whether the majority of brand owners go after the cybersquatters through UDRP and URS proceedings, which would greatly increase the number of cases filed over the next year, or if most of them take a wait-and-see approach, even among infringements in gTLDs directly related to their industries, with the hope that the new gTLDs will not catch on and any confusion among consumers will be minimal.
A snapshot taken at the time of writing this post suggests the latter, but that could change quickly. Right now, there are only a few listed pending UDRPs on the WIPO database among new gTLDs, such as loehmanns.clothing, statoil.holdings, and statoil.ventures. A few more disputes are listed on the National Arbitration Forum database, but almost all of those, such as various ones filed by Richard Branson/Virgin, Accenture, BBVA, and Heartland, appear to be of the URS variety.
As the URS proceeding is cheaper – but does not transfer a domain name, only suspends it – conventional wisdom would expect that the URS proceedings would be used for the majority of garden-variety cybersquatting situations, whereas the UDRP would be for those situations where the gTLD string is the name of a product, service or industry directly related to the brand name, making it more likely that the trademark owner would want the domain name transferred. Either way, both types of proceedings are certain to be used more frequently in the coming months.
The attorneys in our Internet, ICANN, and Domain Name Practice have been at the forefront of the gTLD launch, having participated in ICANN’s multistakeholder process, including serving on working groups, and drafting teams and committees to help formulate protection mechanisms for trademark holders in the new system. Reed Smith can help companies navigate this new landscape in a variety of areas that include dispute-resolution procedures, registration, brand protection and compliance.