I believe we have a first, a domain name has been order suspended by a Uniform Rapid Suspension (URS) examiner after a complain on the same domain was rejected by another examiner a month earlier
In the first URS filed over the domain name SKX.science, Skechers U.S.A., lost its attempt to get the domain suspended after the Examiner, Luz Helena Villamil Jimenez, found “the Complainant did not submit any arguments to support the grounds of the Claim. He simply mentioned the trademark on which the case is based and submitted a copy of the U.S. Registration thereof, although without evidence of the fact that it was renewed upon expiration in 2012. Proof of use of the trademark was submitted.
“Even though the copy of the U.S. Trademark Registration submitted to support the case does not show if it was renewed upon expiration in 2012, a quick review performed by the Examiner at the website of the USPTO allowed establishing that the trademark registration was indeed renewed, and is in force until 2022. This being the case, the Examiner considers tht the Complainant has met his burden in this respect.”
“The Complainant did not submit one single argument to demonstrate why he considers that the Registrant does not have legitimate right or interest to the domain name. Even though the URS provides an expedite solution to issues involving the registration of domain names which include trademarks owned by third parties, it is a duty of the Complainant to explain why the domain being challenged violates the prior trademark rights. In light of this, the Complaint does not meet the requirement of URS 1.2.6.2.”
“There is a total absense of arguments from the Complainant as to why the domain name was registered and is being used in bad faith. It is not enough at all to transcribe in a Complaint the provisions of the URS Procedure, since not necessarily all the circumstances listed are met with the registration of a given domain name. This is a task that the Complainant shall accomplish, not the Examiner. For this reason, the Complaint does not meet URS Requirement 1.2.6.3.”
However in the decision handed down today by the Examiner Alan L. Limbury, found that since the term SKX is in the Trademark Clearinghouse and that the domain holder Joel Williams had to click on the notice and acknowledged the claim in the domain registration process coupled with the finding that “the domain name was registered and is being used in bad faith, such as: By using the domain name Registrant has intentionally attempted to attract for commercial gain, Internet users to Registrant’s web site or other online location, by creating a likelihood of confusion with the complainant’s mark as to the source, sponsorship, affiliation, or endorsement of Registrant’s web site or location or of a product or service on that web site or location.”
“As the SKX trademark has been submitted to and verified by Trademark Clearing House, Respondent must have received a warning from the Trademark Clearing House indicating that the SKX trademark belongs to Complainant. Despite this warning, Respondent chose to continue with the registration of the domain name, thereby creating a likelihood of confusion with Complainant’s SKX mark as to the source, sponsorship, affiliation, or endorsement of Respondent’s website.”
The second examiner did not mention the first URS case or the finding of the first examiner nor the standards for a second bite at the apple.
