The first ever UDRP complaint for a New gTLD domain name was filed today, February 11th, at WIPO. The UDRP complaint with WIPO Case Number D2014-0206 was filed by Canyon Bicycles GmbH, a German bicycle company.
The domain name Canyon.Bike was registered on the 5th of February using a pre-registration order at Go Daddy for about $25. The domain is still behind whois privacy that will be removed shortly because of the dispute.
This was one of the fastest UDRP complaints I have ever seen. It took the German company less than 4 working days to file it. The fact that it is a slam-dunk case must have helped. Canyon Bicycles GmbH has a European Union trademark for the mark “Canyon” for bicycles. The mark “Canyon” was not registered in the Trademark Clearinghouse. One Trademark Registration costs $150 for 1 year.
Before this complaint, a complaint was also filed for ibm.guru and ibm.ventures but that was a URS complaint filed by IBM at the National Arbitration Forum (NAF) on the 6th of February. NAF is the sole URS provider for now. That was the first URS complaint filled for any New gTLD domain name.
But a UDRP complaint is different than a URS one. The complaint, if successful, will result in a transfer of the domain name to the complainant.
Through the URS Procedure ICANN offers a lower-cost, faster path to relief for rights holders experiencing clear-cut cases of infringement caused by domain name registrations. The URS filling fee at the National Arbitration Forum is $375 for up to 14 domain names. The URS can only lead to suspension of the domain names. The URS will not provide the transfer of the disputed domain name to the trademark holder. If the trademark owner wants to take ownership of and use the disputed domain, it should instead file a UDRP complaint or other legal action.
So complainant Canyon Bicycles GmbH chose the UDRP complaint that costs $1500 to file so that it will take ownership of the disputed domain name.
More such blatant tm violations: Piaggio.bike (at Sedo), Cannodale.bike, Specialized.bike – all are bike brands.
All these bike brands only had to buy 1 new gtld domain and they didn’t.
There are going to be several companies that will only need to buy a single new gtld from 1000 and will fail.
Exactly why it’s pointless to use the TMCH across every gTLD; they should secure the ones pertaining to their industry.
And the TMCH fee plus the sunrise fee is much cheaper than any UDRP or even URS.
Ok, NOW can we agree that this whole gtld idea was a dumb one?
Gonna get worse (ie more tm infringement litigation) before it gets better (ie the gtlds fizzle out and disappear).
It would be funny if the respondent is canyonbikes.com.
Why can”t they buy the Domain name for 500 Dollars?, instead of filing UDRP for 1500 Dollars?..
They want to set an example.
I have seen companies wasting 50k+ in court to get a domain for which they had a failed UDRP complaint.
Instead of paying 10k in the first place.
Some companies have very greedy lawyers.
I’d be surprised if Congress doesn’t get ICANN for this whole mess.
All these extensions are such drek. So much confusion. Confusion is not good for markets or attempts to modify behavior. I call clusterfuck on this whole gtld experiment.