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Hogan Lovells First to use ICANN new gTLD Rights Protection Mechanisms Filing First Ever URS for Facebook

09 December 2013

LONDON, 9 December 2013 – Hogan Lovells has successfully represented Facebook in its efforts to suspend the ‘.facebok.pw’ domain name, using a new legal rights protection mechanism called Uniform Rapid Suspension (URS).

Facebook is the first brand owner to file a dispute under the URS, a new dispute resolution mechanism designed to quickly suspend domain names that are infringing on a brand’s trademarks. The URS was first introduced by the Implementation Recommendation Team (IRT)  which was formed by ICANN to develop and propose solutions to the overarching issue of trademark protection in new gTLDs.

Hogan Lovells requested that The National Arbitration Forum block the ‘.facebok.pw’ domain name because it was too confusingly similar to the current Facebook trade mark. Hogan Lovells argued that the ‘.facebok.pw' domain name was being used in bad faith by its creators after it was found that it was being used to host web page listings for popular search topics in a bid to generate click through fees.

Presenting this evidence to the Court on 21 August 2013, alongside the fact that the creators had also engaged in a previous pattern of illegitimate domain name registrations by swapping or altering letters of other well-known trade marks for their own personal gain, the domain was suspended for the duration of the registration on 27 September 2013.

Hogan Lovells partner David Taylor, who represented Facebook in this case, and was also a member of the IRT, says it is a great example of how the new URS protection can be used to get an illegitimate domain name suspended by the Courts very quickly.

He said:

"After so many years of process development since 2009 and the Implementation Recommendation Team report where the URS was proposed it is great to finally see the first URS complaint and decision in action.

"The URS may not be appropriate in all circumstances; it remains a complement to the UDRP. Much depends upon whether you want to manage the domain name going forward in your portfolio or get it suspended from the DNS”.


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