You’re part of one of the biggest brands in the world. It’s a sunny Monday morning and you’re sitting sipping coffee at your desk as you flick through your inbox without a care in the world. Then “ping”, an email drops in from your team highlighting yet another infringement on your IP. What is it this time? Pfff, it’s just one more cybersquatter trying to piggyback off your good name and profit from illegitimate activities. As you roll your eyes, you send a reply back asking your colleague start UDRP proceedings, and then you sit back, secure in the knowledge that, a brand as big as yours will have no problems claiming this domain too……or will you?

Several high-profile cases over the years have shown that is not always the case, especially if you have not done your homework and properly assessed the case before hitting that submit button.

 

Let’s recap

The potential for cybersquatting has grown immensely since the Internet Corporation for Assigned Names and Numbers (ICANN) – the international body responsible for co-ordinating all these addresses – authorised the launch of hundreds of new generic Top-Level Domains (gTLDs), such as .xyz and .nyc, as well as controversial ones like .sucks and .porn. When ICANN proposed allowing these new generic Top-Level Domains, the trademark world flipped out and were not receptive to the idea because they were so concerned about cybersquatting and poaching. Those concerns would appear to have been largely justified with a 13.8% increase in cybersquatting cases filed before WIPO in 2020(5).

 

So how do you win a UDRP and stop that cybersquatter?

The Uniform Domain Name Dispute Resolution Policy (UDRP) was introduced in 1999, to provide trademark rights holders with an administrative mechanism to address cases of abusive domain name registration and use.

Putting it simply, to win a case, a complainant must prove the three following cumulative elements:

  • The domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
  • The domain name registrant has no rights or legitimate interests in respect of the domain name; and
  • The domain name has been registered and is being used in bad faith.

That’s sounds easy peasy! Especially if you own the IP rights to one of the biggest brands out there, no? Well, in most cases yes, but there are some areas that require some close attention.

For example, cases may become particularly complex if the famous trademark you own is also a dictionary term. In these circumstances, proving that “the domain name has been registered and is being used in bad faith” may be tricky.

The recent Nike case highlights this point perfectly. Nike, the owner of one of the best-known trademarks in the world – a brand that Forbes values at more than $39 billion – failed to convince a UDRP panellist that the disputed domain name <nike.dev> was registered and used in bad faith.

The disputed domain name leads to what was described as “a largely undeveloped website” that includes a photo of the statue of Nike, the Greek mythological goddess, as well as a disclaimer that says it “is in no way associated with the NIKE brand” (although the UDRP decision said the disclaimer was added a few days after the UDRP complaint was filed). The registrant of <nike.dev> argued that the domain name was not registered and used in bad faith under the UDRP, instead that it was intended to honour the Greek goddess and was to be used for personal projects.

The UDRP panellist had no difficulty finding that the domain name was identical to the Nike trademark, but he did however find that Nike failed to establish the bad faith element and subsequently did not need to determine whether the Respondent lacked right or legitimate interests. In this “close case”, the panellist noted that the complaint and the response provided was what he called a “fairly limited factual record”. Despite a claim that was “not abundantly supported” and some “dubious aspects of the Respondent’s account”, the Respondent convincingly asserted that the registration and use of a domain name, “even if it resembles a well-known trademark”, is exclusively being used for personal reasons. This is not the first UDRP case that tackled the trademark versus dictionary name conflict. The Nike case even referenced the “Philip Morris USA Inc. versus Borut Bezjak, A Domains Limited” case (WIPO Case No. D2015-1128). In this situation, the term “Marlboro” incorporated in the disputed domain name was not targeting the Complainant’s trademark but connected to geographic locations.

 

“Failing to Prepare is Preparing to Fail” — Benjamin Franklin

While this case does not give cybersquatters the green light to go ahead and register famous trademarks as domain names without any consequences, it does make you pause for thought for cases where trademarks may also have another meaning or where the registrant can offer “a fairly cogent explanation” for its activity.

It is also a good lesson for trademark owners trying to decide whether to file a complaint under the UDRP and highlights the importance of making sure you have done your homework, ticking all those boxes. At BRANDIT, we always try to anticipate this prior to filing a complaint, making sure the complaint is worth filing in the first place and, if so, to include all potential factual and legal arguments to help ensure success.

 

*Picture: By Marek.69 talk – Own work, CC BY-SA 3.0

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