The number one enemy of domain names: cybersquatting
The 15th of March marks the thirtieth anniversary of dot-com. There are over 115 million dot-com domain names registered in the world, representing about 42 percent of all web addresses . Creating an issue of availability. Naturally, this causes a big challenge for consumers and businesses who wish to acquire the domain name dot-com of their choice and who do not have sufficient funds to do so.
In response to the issue, the Internet industry regulator ICANN (The Internet Corporation for Assigned Names and Numbers) was in the process of reorganising the Internet through the introduction of more than a thousand new web address endings. These suffixes include non-Latin characters, such as Cyrillic, Arabic and Chinese representing an effort to create a more international web . For example, companies in the food and beverage industry may forego the .com domain in favour of .bar, while those in the design industry will soon be able to purchase a domain name ". design ".
This rapid expansion could only attract cybersquatters. The practice of cybersquatting is to register domain names in order to, once registered, monetize the high price with regard to persons or companies with an interest in the name chosen as a domain name, or benefit from the reputation of the chosen name for attracting visitors to their site.
Three elements are required to conclude a prohibited practice of cybersquatting:
- Your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
You have no rights or legitimate interests in respect of the domain name; and
Your domain name has been registered and is being used in bad faith.
The case law is extremely rare; we must refer to disputes that were referred to the WIPO (World Intellectual Property Organization) to understand the hazards of cybersquatting for a brand.
In the case Sheppard Industries Limited v. Tiagra Investments, Christopher Murphy / Whois Agent / Whois Privacy Protection Service, Inc., from September 2014, a complaint arose following the launch of the domain name " .bike ". The Complainant is a New Zealand corporation. It is a manufacturer of bicycles and since 1985 it, or its predecessors, have manufactured and sold bicycles under and by reference to the name AVANTI. Since March 3, 2014, the Respondents have used the Domain Name in connection with a holding page which provides "click through" links to web sites advertising or promoting other parties products including those of competitors of the Complainant.
Such a combination was deemed likely to create confusion for the user who expects any domain names hosted at this address to be connected, in one way or another, to Avanti, the complainant's brand. In addition, the Panel finds that the Respondents have failed to produce any evidence to establish any rights or legitimate interests the Domain Name. Finally, it was said that everything was done in bad faith. In conclusion, the Panel orders that the Domain Name, <avanti.bike>, be transferred to the Complainant.
An even more relevant conflict, concerning new domain name extensions, is the one surrounding the " .clothing " resolved last December. We are talking about the Hermes International v. Domain Administrator, MMGA Domains, LLC dispute. The Complainant is Hermes International, a French high fashion house established in 1837. The website at the Disputed Domain Name redirects Internet users to the Respondent's official website, at which Internet users can purchase specific domain names which are offered for sale by the Respondent. This case highlighted an important aspect for new extensions.
A number of panels have found that a descriptive TLD suffix may further suggest an association with a trademark, thus increasing confusion
Here, ". clothing" is descriptive of one category of goods provided by the Complainant under the Trade Mark. As such, this descriptive TLD suffix increases the confusion. In addition, the respondent does not use the Trade Mark in respect of any other goods or services it currently provides and is not commonly known by "HERMES". Finally, and in line with the third criterion, the Respondent is likely attempting to attract, for commercial gain, Internet users to its website.
The danger facing brands can only increase , as new domain names will continue to emerge in the coming years. To illustrate, as of December 9 2015 , the domain names that are on sale are ; “. auto”, “. car”, “. protection”, “. security” (December 17 2015). For more information and to keep an eye on the upcoming releases on new domain name extensions , see the release schedule of new gTLDs, which are to come.
Gradually, as these new extensions will emerge, all the controversy surrounding cybersquatting will only amplify and become even more relevant. The above arguments are just two examples of many other disputes that have occurred and will occur. Which is why “businesses should be taking a proactive approach to registering web addresses” . It is important to emphasize three key actions to be taken to prevent cybersquatting :
1) File your brand in the Trademark Clearinghouse.
2) Register your desired brands and names in the new TLDs.
3) Create an effective implementation plan.
In short, domain name registration that meet your company names, brands and trademarks help prevent others from using them and to be warned if a third party seeks to take control of a domain that matches your IP. Prevention is better than cure.
- The Telegraph, “Dot-com at 30: will the world's best-known web domain soon be obsolete?” [Online]<http://www.telegraph.co.uk/technology/internet/11470195/Dot-com-at-30-will-the-worlds-best-known-web-domain-soon-be-obsolete.html> retrieved on 2015-11-24
- The Telegraph, « Dot-UK launch: why do we need new domain names? » [Online]<http://www.telegraph.co.uk/technology/internet/10888869/Dot-UK-launch-why-do-we-need-new-domain-names.html> retrieved on 2015-11-24
The Telegraph, « Cyber-squatting disputes up 300pc amid web address explosion » [Online] <http://www.telegraph.co.uk/technology/internet/11473282/Cyber-squatting-disputes-up-300pc-amid-web-address-explosion.html> retrieved on 2015-11-24