In 2010, the WIPO (World Intellectual Property Organization) processed 2696 complaints for cybersquatting concerning a total of 4370 domain names.
During an UDRP (Uniform Dispute Resolution Policy) decision the complainant must prove that the three following conditions are satisfied: the domain name is identical or confusingly similar to a trademark or service mark to which the complainant has rights, that the respondent has no rights or legitimate interests in respect of the disputed domain name and finally, the domain name has been registered, and is being used in bad faith. The fees for filing a complaint are 1500 dollars USD per complaint.
UK firms were quite active in the fight against cybersquatting with around 125 complaints in 2010. 93% of the final decisions are in favor of the complainants and order that the disputed domain name be transferred to the complainant. But in the majority of cases the respondents do not offer any defense (83.4%).
In 2010, less than 6% of the decisions have been in favor of the respondent. For example the transfer of the domain name simplybusiness.com has been denied. The respondent argued that the complainant Xbridge Limited of London (providing insurance related services under the name “Simply Business”) did not have any rights on the two common words associated. The panel agreed with the respondent’s argument.
Two winners: Barclay’s and Jimmy Choo
Barclay’s, the well-known international bank, and Jimmy Choo that specializeds in footwear and handbags are the two most active firms in the UK for complaints to the WIPO. They have been involved in 10 proceedings each this year. Accordingly to our study (*), the third most active firm is Roche Products (UK leader in diagnostics solutions) with 5 proceedings and Harrods (luxury beauty and fragrance, fashion accessories, gifts) with 4 disputes.
UDRP procedures allow the complainant to ask for a decision for several domain names at the same time if they are owned by a unique holder. Jimmy Choo and Roche Products used this technique to recover 8 domain names each with one complaint. For example, helpforaccutane.com, accutaneawards.com, accutanedanger.com, accutanedangers.com, accutanelegal.com, accutaneproblem.com, accutaneproblems.com and accutanetrial.com were recovered in one decision. Other brands have done the same to obtain the transfer of between 3 and 5 domain names in one decision. For example, the domain names valium365.com, buyvaliumoffers.com, and diazepamvalium-offers.com were recovered in one decision.
Parking pages, third website, pornsquatting… the main uses of the disputed domain names
42.5% of disputed domain names redirect the Internet user to a parking page. It is a webpage proposing sponsored links, mostly to competitors. 42.5% of the disputed domain names were resolving to a third party's active website. 12 disputed domain names were inaccessible and 2 were redirecting to a registrar waiting page. cantoruk.net was used for phishing. It is a way of attempting to acquire sensitive information such as usernames, passwords by masquerading as a trustworthy entity in electronic communications. Several domain names were used for porn content (ex: speedoguy.net, speedopics.com for the trademark Speedo).
The disputed domain names were mainly registered in the first Top-Level-Domain (TLD) in the world: .COM (78 %). The other TLDs often used are .NET (8 cases), .ORG (6 cases), and .ES, Spain’s cctld, (2 cases). The new TLD of Colombia .CO confusingly similar to the .COM has been used in 4 cases (read the article “The brands recover their squatted .CO” to learn about the domain names disputes in .CO).
46% of disputed domain names are composed of the trademark associated with a common term
The registered domain names are mainly composed of the trademark and a common term as “online” (7 cases), “outlet” (3 cases), or “shop” (2 cases). Around 30 % of the cases were absolutely similar to the trademark and 7 % were typosquatting the name. Typosquatting is writing the trademark with one or several mistakes in the domain name. For example, the domain name laurashley.com is a typosquatting of the trademark Laura Ashley (selling home furnishings and womenswear) or interroute.com for the trademark Interoute (provider of telecommunications network services). It is also quite common to add a country or a town to the trademark (5 % of the cases) : harrodstokyo.com, barclaysghana.net, jimmychoousa.com.
The registrar used to register the disputed domain names are often the same. In fact almost 15 % of the domain names were registered with Go Daddy, 10 % with Tucows, and 8 % with Enom. This is not surprising as they were the 3 fastest growing domain registrars worldwide in 2010.
The top 5 law firms representing complainants
In 2010, almost 10% of the UDRP proceedings were instigated by A.A. Thornton whose main client is client Jimmy Choo. With its client Barclay’s, Pinsent Masons LPP represents 8% of the proceedings. The third one on the ranking is Dechert LLP when Burges Salmon LLP, mainly defending Harrods’ interests has been involved in 5% of proceedings. Most of the law firms representing UK complainants are also located in the UK. Surprisingly Lathrop & Gage L.C, based in the USA is the fifth most active law firm with their UK clients.
A specific Dispute Resolution Service for the national TLD .CO.UK
The domain names disputes in the national TLD .CO.UK cannot be resolved by the WIPO and an UDRP procedure. In fact the English registrar has a specific Dispute Resolution Service (DRS) for this TLD. The rules of a DRS procedure are quite similar to thise of the UDRP procedure. However the DRS has 3 stages that may be used.
Mediation is a very successful process where a mediator discusses with both parties, confidentially and as a neutral third party, how the dispute could be settled. Mediation is free for the complainants.
If the mediation does not succeed in settling the dispute, the complainant may pay for an independent expert intervention. The fee is £750 + VAT for a full decision or £200 + VAT for a summary decision. The expert decides the outcome of the dispute.
After the expert makes their decision, the parties can appeal it. The appeal is heard by a panel of three experts, and costs £3,000 + VAT.
In 2010, 219 decisions were settled through the DRS. Among them the full decisions represent 38 % of the settlements, the summary decisions 60 % and only 4 appeals have been mase. The mediation cases are not recorded.
Some of the UK firms have really understood the issues concerning online trademark abuse and have begun to engage in UDRP proceedings to defend their brands. In fact, the domain name is one of the main assets of the firm and should be among the most protected. We can be sure that the number of cybersquatting cases will keep increasing with the future new gTLD (Generic Top-Level Domain).
Firms now have to consider the risks and the damage to their brand image or their traffic. Monitoring domain names is essential tool in detecting potential trademark abuse. Firms will then be able to determine the steps they want to take to protect their trademarks.
Keep Alert monitors domain names that are confusingly similar or include your trademark. It covers all the existing TLDs and allows the creation of personalized reports that may be used as evidence (thanks to stamped screenshots of the results). It also automatically detects the main cybersquatting cases as typosquatting, countrysquatting, dotsquatting… Keep Alert informs you of modifications to a monitored domain name (If there is a content change for example). The module will also inform you about the UDRP decisions that have previously been taken to help you prepare your legal action.