On April 10, 2014, the Examiners of National Arbitration Forum rendered their first decision on a domain name carrying the gTLD .uno. They also took the opportunity to strictly remind the manner in which a trademark right should be established.
In the present case, the domain name <aeropostale.uno> had been reserved. However, the Aeropostale trademark was registered with the Trademark Clearinghouse (TMCH), a declaration-based database that allows trademark owners and registrants of a domain name carrying a new gTLD to be notified in cases of cybersquatting of the trademark.
This was the case here but the registrant clearly ignored the TMCH notification. On March 26, the company Aeropostale therefore filed an URS (Uniform Rapid Suspension) complaint with the NAF requesting the suspension of the disputed domain name.
The decision of the Examiner was swift. In one paragraph, he reminded that the first condition to obtain an order of suspension is to establish that the domain name is identical or confusingly similar to a trademark on which the complainant has a right. In the present case, however, whilst there are several Aeropostale trademarks, none of them bears the name of the company that filed the URS complaint.
Additionally, the complainant failed to show any relationship with the companies owning the Aeropostale trademarks. The Examiner could not logically consider that the first condition for URS complaints was met. He therefore did not bother to see whether the other conditions were met.
Thus, the Examiner ordered that the domain name remain to the respondent.
At first glance, this decision might seem surprising since it is clear that the Aeropostale trademark was identically reproduced in the domain name. Yet it is fully in line with previous decisions and the principles that govern the URS and URDP proceedings. To exercise these rights, it is not sufficient to establish the existence of trademarks; but one should be the owner thereof.
Dreyfus law firm specializes in domain name cybersquatting cases and can assist you in better managing your conflicts on the Internet. Please do not hesitate to contact us for any further queries.