Tagheuer has become the latest trademark holder to lose a Uniform Rapid Suspension (URS) proceeding on the domain name tagheuer.digital
Ho-Hyun Nahm, as Examiner found in favor of the domain holder although the domain did not resolve finding:
“Passive holding can be considered as an indication of bad faith. However, in case of the disputed domain name, it has been less than four (4) months since its registration on June 19, 2015. As such, the period of passive holding is too short to infer Respondent’s bad faith especially in the circumstances that Respondent strongly denies Complainant allegation by demonstrating its intent-to-fair use. Accordingly, Complainant has failed to satisfy the third element of the URS.”
The domain holder contended that it is “well-established and a registered company in Australia which has been in operation since January 2013, it seeks to use the primary .digital to brand in the space, and to approach fraud and communication in a branded and secure sense. It intends to build its brand by selling retailers gift cards and delivering them as digital MMS messages, as well as offering retailers additional opportunity to push promotional MMS offerings. It continues to contend that it has the right to protect its own interests and take every possible step to create recognizable and secure communications platform and that it has the right to sell products and purchase products that are available for sale. ”
We observed that the two recent URS decisions involving Netflix, might kill off the URS as a viable option for trademark holders and this case reinforces that.
Since a URS only suspends a domain name for the duration of the registration rather than transfer ownership as in a UDRP it would typically be filed shortly after registration rather than a UDRP which can be many years later after registration.
If as a domain holder if all you have to do is say your going to develop a new gTLD and if just short of 4 months is too soon to judge the case that leaves with a trademark holder having to wait, what six month or none months to see what the domain holder does with the domain?
So the URS seems now to be only useful for new gTLD domains that are parked or offered for sale.
