Domain name disputes are pretty standard items in the brand protection strategies. Domain name disputes afford brand owners an expeditious and cheap way of securing ownership rights over infringing domain names. Case in point, Gucci’s significant win over 165 infringing domain names this week. Each of these infringing domain names was owned by 1 entity, that operated out of China. The domain names ranged from somewhat standard infringing domain names (guccidesigner-handbags.com, guccihandbags-group.com, etc.) to the more fanciful (freegucciyahoo.com, guccihomesale.com, newyahooguccihandbagshomes.com, etc.)
Domain name disputes are essentially tribunal hearings that have a very narrow scope and are preferable to court proceedings as (a) every domain name is subject to domain name dispute policy, regardless of where the domain name was registered in the world, (b) is limited to evidence and arguments that are submitted in writing, (c) go the heart of the matter: ownership of the domain name, (d) enable the tribunal to transfer ownership to the righful owner, (e) can be decided in months, as opposed to drawn out litigation that can take years. Every brand owner should incorporate domain name disputes into their brand protection strategy.
Gucci was able to satisfy the requirements to be awarded ownership over these domain names by proving:
a) the 165 domain names in question were identical or confusingly similar to Gucci’s trade-marks;
b) the owner of the allegedly infringing domain names did not have legitimate rights or interests in the domain names; and
c) the domain names were registered and being used in bad faith.
In addition, Gucci was able to demonstrate that the domain names were largely being used to sell counterfeit products.
The domain name owner did not contest Gucci’s complaint or file submissions to assert its rights over the domain names.