Saper Law has successfully defended FleetTruckParts.com in a domain name dispute before the URS (Uniform Rapid Suspension System). The URS is a dispute resolution policy that applies to top level domain names registered after January 1, 2013. Unlike its more familiar counterpart – the Uniform Domain Name Dispute Resolution Policy (“UDRP”) – the URS is billed as a cheaper and faster alternative.
In this case, the complainant, Dana Limited, argued that FleetTruckParts.com’s ownership of the domain names dana.parts and spicer.parts infringed on Dana’s registered trademarks for DANA and SPICER. In order to succeed, Dana was required to prove three elements: (1) the domain names are identical or confusingly similar to the Dana marks; (2) FleetTruckParts.com has no legitimate right or interest to the domain names; and (3) the domain names were registered and are being used in bad faith.
While Saper Law did not contest the similarity that the domain names had to Dana’s marks, Saper Law successfully argued that Dana did not meet its burden as to the other two elements. Specifically, the URS Examiner found that Saper Law raised questions supporting FleetTruckPart.com’s “legitimate or fair use of the disputed domain names for the sale of second hand [auto] parts.” Furthermore, the Examiner agreed with Saper Law’s argument that Dana had not shown that FleetTruckParts.com registered and used the domain names in bad faith. Therefore, the Examiner ordered that the dispute should be dismissed without any findings and the domain names be returned to the control of FleetTruckParts.com.
The Examiner’s findings are noteworthy because respondents in URS proceedings have rarely succeeded on the issues of legitimate right or interest in the domain names and bad faith registration. Indeed, in preparing for its response, Saper Law found very few cases in the National Arbitration Forum’s searchable database in which a respondent succeeded on the element of bad faith in a URS proceeding. Moreover, Saper Law was able to build on its prior experience handling UDRP disputes in successfully defending its first foray into the URS arena.
Daliah Saper, principal attorney at Saper Law Offices, is at the forefront of the evolving domain name legal landscape. She has attended several domain name conferences in the past, and the firm frequently counsels clients on the intersection between domain names and intellectual property law.
The URS is part of the National Arbitration Forum’s domain name dispute resolution services. The National Arbitration Forum is an approved provider of such service by the Internet Corporation of Assigned Names and Numbers (ICANN). For more information, visit http://domains.adrforum.com/.