Hogan Lovells has successfully represented Facebook in its efforts to suspend the ‘.facebok.pw’ domain name, using a new legal rights mechanism called Uniform Rapid Suspension (URS).
Facebook is the first brand owner to file a dispute under the URS, a 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 generic top-level domains (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 trademark. 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 webpage listings for popular search engines in a bid to generate click-through fees.
Presenting this evidence to the court on 21 August 2013, alongside the act that the creators had also engaged in a previous pattern of illegitimate domain name registrations by swapping or altering letters of other well-known trademarks for their own personal gain, the domain was suspended for the duration of the registration on 27 September 2013.
According to David Taylor, partner at Hogan Lovells, who represented Facebook in this case, and was also a member of the IRT, 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.