Word mark vs. Figurative mark in URS.
The URS against the domain Silit.shop failed, and the National Arbitration Forum panelist explains why.
What is URS?
Unlike the UDRP process that can be lengthy and complicated, the Uniform Rapid Suspension System (URS) is quicker and more efficient. It allows trademark holders to proceed quickly and at a lesser cost against domains that obviously infringe their marks.
That being said, the URS is also stricter in what it accepts as evidence against a domain, and these rules have to be observed to a “T.”
In the case of the domain Silit.shop, the Complainant Silit-Werke GmbH & Co KG of Riedlingen, Germany, claimed infringement on the basis of a figurative European trademark for “Silit.”
Alas, the URS process requires the existence of a word mark, not a figurative mark, and the panelist pointed that out:
“URS Procedure 1.2.6.1 requires Complainant to prove, by clear and convincing evidence, that the registered domain name is identical or confusingly similar to a word mark.
The Examiner did find evidence of a figurative EU mark in the Complaint, but did not find any evidence of a word mark in the Complaint. The Complaint mentions that the Complainant owns a global portfolio of registered trademarks for its Silit brand.
However, the Complaint did not contain any evidence of a word mark “Silit”. URS Procedure 1.2.6.1 is very clear in the sense that the Complaint should be based on a word mark.
URS Procedure 9.1 is very clear in the sense that the evidence is limited to the materials submitted with the Complaint and the Response, and that those materials are the entire record that can be used by the Examiner to make a Determination.“
Long story short: to pull off a successful URS one needs an existing word mark. A figurative mark, won’t do the job.
Silit.shop was thus ordered to remain with the Respondent. The complainant will most likely try the UDRP approach next.
It’s interesting to note that the Respondent in this case owns other trademark keywords, such as nutella.shop, wilkinson.shop, wilkinson-sword.shop and albertsons.shop.
For the full text of the URS, click here.
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