Thu 22. Aug 2024, 07:48
In the dispute over the domain capio.app, the Swedish healthcare group Capio AB dared to initiate suspension proceedings under the URS, but failed. From the examiner's point of view, the company did not fulfil its burden of proof with regard to the bad faith of its opponent.
We have not discussed a Uniform Rapid Suspension (URS) decision for a long time. It is time to recall it and point out the differences to the UDRP procedure: Dispute resolution procedures under the URS are faster and more favourable than those under the Uniform Domain-Name Dispute-Resolution Policy (UDRP). However, the URS also requires a ‘clear cut case’: everything must be simple and clear. The complainant has only one opportunity and a maximum of 500 words to demonstrate that the domain is identical or confusingly similar to a term for which it enjoys protection under the Trademark Clearinghouse, that the owner has no legitimate interest or right in the domain and that both the registration and use of the domain have been made in bad faith. The requirements of the URS procedure are very similar to those of the UDRP. Both procedures are aimed at trade mark owners, but the UDRP procedure allows somewhat greater leeway - and leads to different results. While the URS merely results in the suspension of the domain until the end of the registration period (which may be entirely sufficient), the UDRP results in the cancellation or transfer of the domain. If the USR procedure was successful, only a placeholder page of the dispute resolution provider is displayed when the domain is called up. After the registration period has expired, the domain can be re-registered by a third party or the suspension can be extended by the complainant for one year for a fee; however, the complainant does not become the owner of the domain.
The Swedish Capio AB started the URS procedure for the domain capio.app on 19 July 2024. After the curtain of the privacy service was lifted, the Canadian ‘ApplyBoard Inc. of Kitchener, ON’ turned out to be the owner of the domain capio.app. The latter responded to the complaint on 12 August 2024 and the decision by Examiner Charles A. Kuechenmeister was issued on 13 August 2024 (Forum Claim Number: FA2407002107022). The proceedings therefore only lasted 25 days. However, the complainant was not successful. It was able to prove its trade marks and provide prima facie evidence that the opponent had no right or legitimate interest in the domain; however, it failed to prove the opponent's bad faith in registering and using the domain, even though the domain redirected to a pay-per-click site with content that reached into the complainant's business area. The opponent countered that he had registered the domain with the plan to use it for a business yet to be established to facilitate the mobility of international students. He had not known about the parking page, which the registrar GoDaddy had set up without being asked. He had instructed GoDaddy to remove the page.
In his decision, Kuechenmeister confirmed the trade mark and that the opponent had no right or legitimate interest in the domain. However, the opponent's claim that he wanted to use the domain to set up a business that had nothing to do with the complainant was not substantiated or explained in detail. He had also left open how long he had already held the domain. Kuechenmeister accepted the representation regarding the parking page, but this did not change the lack of authorisation. The complainant was left behind when it came to examining the opponent's bad faith: as far as the pay-per-click page was concerned, he believed the opponent's statements. There was no evidence that the complainant's trade mark was known or famous. The opponent does not claim that he did not know the complainant and her trade mark when he acquired the domain, but states that he intends to use the domain in a market segment that is completely different from and unrelated to that of the complainant. This shows that the opponent did not register the domain with the intention of generating profit with the good name of the complainant. The complainant bears the burden of proof on this point, but has not demonstrated the necessary factual certainty. For this reason, Kuechenmeister dismissed the appeal.
The URS decision on the domain capio.app can be found at:
https://www.adrforum.com/DomainDecisions/2107022F.htm