NEWS Facebook wins fi rst URS case


Social network Facebook has won the fi rst ever case to be resolved under the Uniform Rapid Suspension System (URS).


T e URS, designed especially for the new gTLDs, is meant to tackle clear-cut cybersquatting cases more quickly than existing systems.


Facebook complained about the domain facebok.pw in August, before the case began on September 11.


T e site was used to generate click-through revenue for the registrant, who did not respond to the complaint and had a history of cybersquatting.


As in Uniform Domain-Name Dispute- Resolution (UDRP) cases, a domain can be transferred only if the domain is identical or confusingly similar to a trademark; the registrant has no legitimate rights or interests in the domain; and if it was registered and used in bad faith.


Aſt er reviewing Facebook’s complaint, examiner


Darryl Wilson found on September 27 that the company had demonstrated all three elements by showing “clear and convincing evidence”.


T e domain will be suspended until its registration period elapses.


David Taylor, partner at Hogan Lovells LLP who represented Facebook in the case, said it was “great to fi nally see the fi rst URS complaint and decision in action”.


He added, however, that the URS may not be appropriate in all circumstances, and should remain as a complement to the UDRP.


“T e URS is designed to be lighter than


the UDRP, but the built-in safeguards for registrants, if misused, could kill the potential gains in effi ciency. T is is because the URS can go into limbo if the respondent does not respond initially, since it can request a seven-day extension at any point in the 30 days following the default decision.


Advocate-general says yes to site blocking


Internet providers in the EU can be forced to block websites that infringe copyright, but they must refer to specifi c blocking measures, the advocate-general (AG) confi rmed in November.


AG Cruz Villalón was asked whether Internet providers should be considered intermediaries when their services are used by a third party, such as a website owner, to infringe copyright. If so, a blocking order is legal.


T e case was referred from the Austrian Supreme Court (Oberste Gerichtshof), which was dealing with a dispute between UPC Telekabel Wien, a local Internet provider, and rights holders Constantin Film Verleih and Wega Filmproduktionsgesellschaſt .


At fi rst and second instance, Austrian courts ordered UPC to block access to kino.to, a movie streaming site, on which the complainant’s rights were infringed. T e case will be heard at the Court of Justice of the EU (CJEU).


In his opinion, Villalón said that according to the “wording, context, spirit and purpose of the provision of EU law”, Internet providers must be considered intermediaries that have to block infringing sites.


But he said that based on the “fundamental” rights of the parties, courts must apply “specifi c”


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measures when ordering website blocks, though he did not specify what these measures should be.


“T at also applies where the provider can avoid incurring a penalty for breach of that prohibition by showing that it has taken all reasonable steps to comply with the prohibition. Advocate- general Villalón underlines in that connection that the provider of the user has no connection with the operators of the website that infringes copyright and has not itself infringed the copyright,” a press release in English said.


It added: “It is for the national courts, in the particular case, taking into account all relevant circumstances, to weigh the fundamental rights of the parties against each other and thus strike a fair balance between those fundamental rights.”


Blocking orders have been a popular way of tackling piracy websites in some countries, such as the UK, but not in others. In Germany, for example, cases are rare. “I do not think that you have a good case according to German law to claim a blocking,” said Till Kreutzer, a lawyer at the Offi ce for Information Security.


T e AG’s decision is a “much-needed”


development and brings clarity in the debate about site blocking, said Peder Oxhammar,


partner at Baker & McKenzie in Sweden, who has read the opinion in Swedish.


“It’s a well-reasoned opinion,” he said, but stressed that the CJEU does not always follow the AG and that “things may not end up exactly as proposed”.


“Even though he has done a good job, I’m not convinced we have seen the last of this. It’s so political and we must be looking in a political context ... Copyright laws are changing as a reaction to technical developments.”


In a recent spate of blocking orders in the UK, Internet providers were told to cut access to more than 20 sites that infringed copyright. 


Trademarks Brands and the Internet Volume 2, Issue 4 7


“In addition, a de novo review can be requested at any time within six months aſt er a decision, and a period of six months can be requested. T is could make the process a long one indeed.”


Stéphanie Lacroix-Garrigues, corporate account manager at brand protection fi rm Keep Alert, said while the URS does off er brands advantages, the system can suspend a domain only for the remainder of its registration period.


“In a UDRP the trademark owner is able to select either the cancellation or the transfer of the domain name.”


She added: “We have to wait a few months to get statistics on the usage of domain names involved in URS aſt er the end of the registration. If they are grabbed by another cybersquatter then the URS will not be useful in a long-term strategy.”


T e Facebook case comes aſt er ICANN approved the fi rst four gTLDs for delegation. Ratifi ed on October 21, the domains are ‘web’),


(Arabic for (‘game’ in Chinese) and онлайн and сайт (‘online’ and ‘website’ in Russian). 


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