Cybersquatting, or
piggy-backing on the reputations of well-known companies and brands by
registering corresponding domain names, is seen as an effective though
unscrupulous practice of making fast bucks. With rise in awareness of
cybersquatting practices as well as the value of domain names as trademarks,
trademark owners are initiating more actions now to recover their intellectual
property online, before arbitration panels of organizations such as WIPO as
well as national level domain recovery agencies (such as NIXI, the National
Internet Exchange of India).
But cybersquatters
generally rely on the advantage in numbers- there are such a huge number of
domain variations and domain name extensions to choose from nowadays, that
registering one trademark across a multitude of domains by a cybersquatter can
make individual recovery of the said domains extraordinarily expensive for a
company and therefore extraordinarily profitable for a cybersquatter. In the
case domain dispute proceedings are instituted, the cybersquatter only loses a
domain or two. For a serial cybersquatter, that does not end up making much of
a dent in the pool.
Domain dispute
proceedings provide three basic grounds which a complainant is compulsorily
required to prove in order to establish their rights to a domain name:
- That the disputed domain name comprises of a mark in which they have rights;
- That the registrant has no rights or legitimate interests in the said domain name;
- That the registrant has registered the disputed domain name in bad faith.
While grounds (i)
and (ii) are fairly straightforward to prove with the help of use in trade and
trademark registrations (or lack thereof), ground (iii) offers the opportunity
for a more complex argument.
In proving mala
fide or bad faith registration of a domain, the UDRP stipulates that factors
such as:
- Registration for the sole purpose of selling, renting or otherwise transferring the disputed domain name to the complainant for valuable consideration;
- Registration intended to prevent the rightful owner of the trademark from reflecting the same in a corresponding domain name;
- Registration for the purpose of disrupting the business of a competitor; or
- Registration/use of the disputed domain name for the purpose of diverting traffic from the website of a competitor or rightful trademark owner by creating initial interest confusion amongst the relevant consuming public.
The
above-mentioned factors may be proven in a number of different ways that depend
on the particular facts and circumstances of each case.
Serial
cybersquatting, where a cybersquatter unscrupulously registers domain names
across the board pertaining either to one brand or a number of
brands/trademarks can be used to evidence the mala fide or bad faith intentions
of a registrant as it serves as ample proof of the registrant’s motive to
profit off the reputation of others without making legitimate or fair use of
the registered domain names.
Various WIPO Arbitration
Panel have recognized serial cybersquatting to be evidence of mala fide registration
as recently as in the decision rendered in the case of Little Acorns Fostering Ltd. v. W P, The Cloud Corp / Al Perkins,
D2017-1776 on October 18, 2017 wherein the learned sole arbitrator ruled in
favour of the complainant who was able to establish that the registrant had
taken over their domain after it was inadvertently allowed to expire and had
subsequently claimed exorbitant sums of money when the complainant had
approached him to acquire the domain without resorting to legal proceedings, and
had further previously engaged habitually in such activity, even having prior
WIPO rulings passed against him.
A few earlier
notable domain dispute decisions held against the registrant on the grounds of
serial cybersquatting are The
Toronto-Dominion Bank v. DOMAIN CONTROLLER / YOYO EMAIL, NAF Claim No. FA1506001622018;
Sanofi v. Aleksei Shutov, WIPO Case
No. D2016-0311.
The Universal
Domain Name Dispute Resolution Policy (UDRP) provides for including multiple
infringing domain names belonging to a single registrant to be acted against
within a single domain complaint. In fact, in recognition of the problem of
serial cybersquatting, WIPO has come up with a dedicated procedure called the
Uniform Rapid Suspension System (URS) which is an even more simplified
procedure than the UDRP for filing a complaint against multiple infringing
domain names being held by one registrant. It aims to provide a faster and more
cost-effective method to trademark owners plagued by serial cybersquatting.
Sources:-
Uniform Domain
Name Dispute Resolution Policy
Uniform Rapid
Suspension System
http://www.adrforum.com/domaindecisions/1622018.htm
ESQwire is full-service law firm, leader in International Domain Name Law and practicing in all areas of Domain Name Disputes, Domain Name Litigation, assignments, change of ownership, portfolio management, renewal filings, trademark infringement.
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