Hong Kong: The URS System – Recent Cases And What They Reveal

Last Updated: 9 July 2014
Article by Gabriela Kennedy and Karen H.F. Lee

Keywords: Trade marks, China, copyright amendment bill, Hong Kong, Pharmacy and Poisons Ordinance, URS System, Chinese Postal Bureau, Personal Data Protection Rules

In 2013, the Uniform Rapid Suspension (URS) system was introduced as an alternative to the Uniform Domain Name Resolution Policy (UDRP) system, with the intent of providing faster relief to trade mark owners in clear cut domain name disputes1. The URS system applies to new gTLDs or ccTLDs that have adopted the URS (i.e., Palau ".pw" domain names). So far, only the Asian Domain Name Dispute Resolution Centre (ADNDRC) and the National Arbitration Forum (NAF) have been appointed by ICANN as URS service providers.

The first URS action to test the waters was in September 2013, and was related to the country code top level domain name "facebok.pw". Since then, there have been over 60 URS cases filed with the NAF and only three filed with the ADNDRC as at 13 June 2014.

This article will provide an overview of what some of the URS decisions reveal regarding the Examiners' approach to URS cases, and when a UDRP action may be preferred.

URS – The three Elements

In summary, the URS requires the complainant to prove the following three elements:

  1. The domain name is identical or confusingly similar to a word mark in which the complainant holds national or regional registration rights and which is in current use (or which has been validated by court proceedings or is specifically protected by statute or treaty);
  2. The respondent has no legitimate rights or interest in the domain name; and
  3. The domain name was registered and is being used in bad faith.

If the Examiner finds that the above elements have been established then the disputed domain name will be suspended. Note that under URS proceedings, the Examiner cannot order the transfer or cancellation of the domain name as with UDRP proceedings – the only remedy available is the suspension of the domain name for the remainder of its registration period.

Unsuccessful URS cases

The URS is intended to be used only in clear cut cases of trade mark abuse, where there are no open questions of fact. Looking at some of the URS cases where the complainant has been unsuccessful will help us analyse what the Examiners may consider to be "clear cut". As at 13 June 2014, there were only seven URS complaints, all filed with the NAF, which were denied (however one of these decisions was overturned on appeal, and the domain name was suspended). Interestingly, all seven of these URS complaints were originally determined by the same two Examiners.

  • In two of these URS cases2, the complainants stumbled at the first hurdle. Although the complainants had presented evidence of trade mark registrations corresponding to the relevant disputed domain names, these trade mark registrations were not held in the name of the complainants, and no evidence was provided regarding the relationship between the complainants and the trade mark holders. As a result, the Examiner denied these cases on the basis that the complainants had failed to establish the first element. Note that one of these cases was overturned on appeal, as the complainant was able to establish that it held relevant trade mark registrations, and was also able to satisfy the second and third element3. In the other five of these URS cases, the Examiner found that while the complainants were able to satisfy the first element, they had failed to establish the second and third elements by clear and convincing evidence, for one of the following reasons:

    • The complainant had failed to establish that its registered trade mark was well-known, and the disputed domain name only resolved to a generic parking page that did not include any references to the complainant or its registered trade mark4.
    • The disputed domain name reflected an abbreviation of the names of four towns to which the respondent provided services, and even though the disputed domain name resolved to a parking page that contained links related to the complainant's trade mark, the Examiner accepted the respondent's explanation that it was unaware of the parking page and had tried to cancel it, but the disputed domain name was blocked due to the URS action. This explanation regarding the parking page was found by the Examiner to be plausible since the URS proceedings were commenced only nine days after the disputed domain name was registered.
    • For three of the URS cases, the Examiner found that despite the complainant holding registered trade mark rights that corresponded to the disputed domain names, as the mark was a generic word, the complainant had failed to establish that the generic word had acquired secondary meaning, i.e., that the trade mark was exclusively and most commonly associated with the complainant. Further, the disputed domain names resolved to parking pages that were not exclusively or strongly associated with the complainant or its trade mark, and there was no evidence to show that the respondent registered the domain name with the intent of taking advantage of the complainant's trade mark5.

What do these cases reveal?

What seems clear from these decisions is that a URS action may not be suitable in every circumstance. If a complaint requires more explanation then the 500 word limit will allow, or there is a genuinely contestable issue, then a URS complaint will likely be denied.

What was repeatedly emphasised in the majority of these unsuccessful URS cases was that URS complaints involve a higher burden of proof than UDRP actions, and are not intended for cases involving any arguable issues. For example, if the trade mark being relied upon is also a generic or dictionary term, then this raises a number of ancillary issues that the complainant needs to overcome in order to satisfy all three elements. In such circumstances, a UDRP action may be more appropriate. Unlike a URS complaint, a UDRP complaint has a 3,000 word limit, and complainants can request to file further supplemental submissions (although the granting of such a request is up to the discretion of the Panel); complainants would therefore be better able to fully develop and set out their factual and legal arguments in a UDRP complaint.

The URS cases decided so far show that the Examiners are still applying the same well established principles formulated by Panellists under the UDRP proceedings – none of the reasons provided by the Examiners for denying the URS complaints are novel or unusual. However, if the complainants in the above URS cases had filed a UDRP action instead of a URS complaint, there is a possibility that they may have been able to succeed.

Summary of the ADNDRC cases

Only three cases have so far been filed with the ADNDRC as at 13 June 20146 – two of which were handled by this firm. So far these cases have been uncontroversial.

All three cases were based on similar facts, i.e., the disputed domain names were identical to the complainants' registered trade marks (save for the domain extension) and also resolved to parking pages.

The Examiners in each of the cases found that the complainant had provided "clear and convincing evidence" to establish all the required elements. In particular, the Examiners relied on the following facts in reaching their decision:

  • The complainants all had numerous registered trade mark rights that were well-known, and which were incorporated in their entirety in the disputed domain names;
  • In two of the cases, the Examiners specifically noted that the complainants had also registered their trade marks with the Trademark Clearing House, and so the respondents must have received notice of the relevant complainant's trade mark rights prior to their registration of the disputed domain names; and
  • The respondents must have been aware of the complainants and their trade mark rights prior to registration of the disputed domain names, based on one or more of the above reasons. For one of the cases, the Examiner also noted that the complainants trade mark was a made up word having no common meaning in any language.

The Examiners found in two of the cases that due to the well-known nature of the complainants' trade marks, and the fact that the respondents would have been alerted to such rights since the complainant had registered its trade marks with the Trademark Clearing House, any "good faith use by the [respondent] is inconceivable"7 and there is "no other plausible explanation for taking a prominent name, incorporating it in a domain name...and using it in the manner described"8. As such, the Examiners held that the respondents had registered and were using the domain names in bad faith to take advantage of the complainants goodwill and creating a likelihood of confusion, for commercial gain.

In the other URS case, the Examiner found that the fact that the respondent registered three domain names on the same date, each incorporating a different registered trade mark of the complainant, showed a pattern of conduct aimed at preventing the complaint from reflecting its marks in corresponding domain names9.

URS or UDRP proceedings?

When deciding whether or not to bring URS or UDRP proceedings, the following questions should be considered:

  1. Is the complainant seeking a quick and cheap resolution, wishing simply to stop the infringing activities as soon as possible?
  2. Is the domain name an unimportant one, which the complainant does not want to use themselves?
  3. Does the complainant hold a registered word mark?
  4. Is the word mark relatively well-known?
  5. Is there a low risk of repeat infringement, i.e., is it unlikely that the domain name will be re-registered by an infringer?
  6. Does the domain name relate to a mark that the complainant only intends to use for a shortterm or temporary campaign, and which is not an essential trade mark for the complainant in the long term?
  7. Is the respondent obviously infringing the complainant's rights, e.g., is the respondent using the disputed domain name to sell competing products or counterfeit goods, etc?
  8. Does the respondent have no viable defence, e.g., it is not a reseller of the complainant, the complainant's mark is not a generic term, etc?

If any of the answers to the above questions are no, then UDRP proceedings may be preferred, in light of the higher burden of proof and the limited remedy (i.e., suspension of the domain name) involved in URS proceedings, and the 500 word limit for URS complainants.

For more details regarding the URS procedure, please refer to our article entitled "The URS – A Strong Alternative to UDRP Actions for New gTLDs?" 10.

Footnotes

1 See "The URS – A Strong Alternative to UDRP Actions for New gTLDs?" by Gabriela Kennedy and Karen H.F. Lee of Mayer Brown JSM: http://www.mayerbrown.com/The-URS--A-Strong-Alternative-to-UDRP-Actions-for-New-gTLDs-11-29-2013/

2 Wolfram Research, Inc. v. Andrew Davies et al, NAF Case No. FA1404001553139; and Aeropostale Procurement Company, Inc. v. Michael Kinsey, NAF Case No. FA1403001550933.

3 Aeropostale Procurement Company, Inc. v. Michael Kinsey, NAF Case No. FA1403001550933.

4 Virgin Enterprises Limited v. Lawrence Fain, NAF Case No. FA1402001545807.

5 Heartland Payment Systems, Inc. v. Whois Privacy Protection Service, Inc., and Kyle Ramsey, NAF Case No. FA1403001546294; Heartland Payment Systems, Inc. v. Redwood Capital, NAF Case No. FA1403001547419; and Finn.co AS. North Sound Names et al, NAF Case No. FA1405001558494.

6 Alibaba Group Holding Limited v. Andreas Perschk, ADNDRC Case No. HKS-1400003; Alibaba Group Holding Limited v. Tian Shuping, ADNDRC Case No. HKS-1400002; and Michael Page Recruitment Group Limited v. Tassanee Atsawasakundee, KTI Recruitment Consultants Co. Ltd, ADNDRC Case No. HKS-1400001.

7 Alibaba Group Holding Limited v. Andreas Perschk, ADNDRC Case No. HKS-1400003.

8 Michael Page Recruitment Group Limited v. Tassanee Atsawasakundee, KTI Recruitment Consultants Co. Ltd, ADNDRC Case No. HKS-1400001.

9 Alibaba Group Holding Limited v. Tian Shuping, ADNDRC Case No. HKS-1400002.

10 www.mayerbrown.com/The-URS--A-Strong-Alternative-to-UDRP-Actions-for-New-gTLDs-11-29-2013

Originally published Second Quarter 2014

Visit us at www.mayerbrownjsm.com

Mayer Brown is a global legal services organization comprising legal practices that are separate entities (the Mayer Brown Practices). The Mayer Brown Practices are: Mayer Brown LLP, a limited liability partnership established in the United States; Mayer Brown International LLP, a limited liability partnership incorporated in England and Wales; Mayer Brown JSM, a Hong Kong partnership, and its associated entities in Asia; and Tauil & Chequer Advogados, a Brazilian law partnership with which Mayer Brown is associated. "Mayer Brown" and the Mayer Brown logo are the trademarks of the Mayer Brown Practices in their respective jurisdictions.

© Copyright 2014. The Mayer Brown Practices. All rights reserved.

This article provides information and comments on legal issues and developments of interest. The foregoing is not a comprehensive treatment of the subject matter covered and is not intended to provide legal advice. Readers should seek specific legal advice before taking any action with respect to the matters discussed herein. Please also read the JSM legal publications Disclaimer.

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