A series of recent domain name decisions confirm that the Uniform Dispute Resolution Policy (“UDRP”) is still largely in favour of brand owners. Domain name disputes are brought under the UDRP to determine a brand owner’s right to own a domain name that contains the brand owner’s trade-marks or, if the domain name is similar enough, that it causes confusion in the online marketplace. In the legal world it is a quick, efficient and cost-effective way in which a brand owner can assert its rights to a domain name that is the subject of “cybersquatting“.
The practice of registering domain names containing third party trade-marks, without having a legitimate interest in those trade-marks or domain names, is commonly referred to as cybersquatting. Cybersquatting is akin to “brand hi-jacking“. A cybersquatter will register domain names that are variations of FASHIONBRAND.com in order to:
(a) divert online traffic onto its website,
(b) generate money through pay-per-click mechanisms, or
(c) sell the domain name to the rightful brand owner at a premium.
This can be very disruptive to the brand owner and can significantly damage its brand.
Three recent decisions confirm that the UDRP is a legal tool that has great utility for the fashion brand: rightful ownership of the domain names: jimmychoo.uk.com, buyvictoriasecretapparel.com and dolcegabbanaapparel.com, dolcegabbanaclothing.com and dolcegabbanaclothingstore.com was granted to the respective fashion houses.
In order to be successful, the UDRP has a three-part test that must be satisfied:
1) is the domain name is identical or confusingly similar to the brand owner’s trade-mark;
2) does the current domain name owner have any legitimate rights or interests in the domain name? and
3) was the domain name registered and being used in bad faith?
In the three decisions mentioned above, the panels all found in favour of the brand owner.
These decisions remind us that the internet is not as “lawless” as it is often presumed to be.