Fast Track Procedure
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On December 5, 2011,
the National Arbitration Forum (“NAF) announced the launch of the Rapid
Evaluation Service (“RES”), a process designed to give trademark owners a fast
track process for protecting their registered trademarks from online
infringement in the just launched .XXX domain registry. See our earlier
memoranda here
and here
for additional information on the launch of the .XXX domain name registry. The RES is similar to the
Uniform Domain Name Dispute Resolution Policy (“UDRP”), but does not supplant
it. In particular, it applies in a narrower set of circumstances,
providing an expedited remedy where there is “objectively clear abuse of
well-known, distinctive registered trademarks . . .
of significant commercial value, or of personal or professional names of
individuals.” Specifically, the RES will apply where:
Bad faith will be found
where a registrant has registered an .XXX domain primarily for the purpose of
selling, renting or otherwise transferring the domain name to the owner of a
registered trademark, or its competitor, for an amount in excess of
documented out-of-pocket expenses. Registrants with a demonstrated
pattern of abusive domain name registrations, or those who register domains
to disrupt the business of the trademark owner or create confusion, will also
be found to have acted in bad faith. Under the RES Policy, typosquatting (e.g., microsfot.xxx) and combining
a trademark with a generic keyword (e.g., microsoftsex.xxx) are
explicitly deemed to create a likelihood of confusion. With respect to personal
names, the RES will apply where (1) the complaint is filed by a natural
person or his/her agent, (2) the .XXX domain name corresponds
substantially to the personal, professional or stage name of that person, and
(3) the domain name has been registered “with an unlawful intent or for
the apparent and demonstrated purpose of harassment or embarrassment”
(although certain fair use exceptions will apply). Under the streamlined RES
procedure, an administrative review of the complaint will be completed in one
day. Within two business days thereafter, a RES evaluator will issue a
preliminary decision. Frivolous claims will be dismissed. If the
evaluator issues a preliminary decision in favor of the complainant,
operations for the subject domain name may be suspended. The domain
name registrant will also be notified and given ten days to respond. If
no response is received, the evaluator’s decision will be made final. Assuming the decision is
made final, the only available remedy will be the cancellation of the domain
name registration and its placement into a registry-reserved status.
The trademark owner will not be able to acquire the domain. The NAF fee for filing an
RES complaint is $1,300 per domain name. If you discover that one of
your registered marks has been registered in the .XXX domain, or would like
further information about this issue, please contact Louis J. Levy (llevy@lermansenter.com, phone
202.416.6748), or any of the other attorneys in our office. December 14, 2011 |
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This memorandum is intended only as a general discussion of these issues and should not be regarded as legal advice. We would be pleased to provide additional details or advice about specific situations if desired. Copyright © 2011, Lerman Senter PLLC 2000 K Street NW,
Suite 600 | Washington, DC 20006-1809 To Unsubscribe: Unsubscribe | To Update Client Info: Update Client Info |
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