Amid the roll-out of hundreds of new generic Top-Level Domains (“gTLDs”), such as .ceo, .cloud and .law, trademark owners have increasingly looked to clamp down on the ownership of infringing domains by third parties. As of last week, Nike gained possession of 20 new domains, including nikeairmax97.com, shopsnikeukoutlet.com and nike-trademark.com, thanks to a World Intellectual Property Organization (“WIPO”) Arbitration and Mediation Centre proceeding. The Portland-based sportswear giant claimed that the domains contain its federally registered trademarks and as a result, run afoul of the law.
Deciding the case on behalf of the WIPO, Panelist Wilson Pinheiro Jabur found that Chinese resident Gueijuan Xu, who registered the 20 individual domains, had, in fact, registered the domains in bad faith, almost certainty to use for the peddling of counterfeit goods. Mr. Jabur stated that Nike’s “trademark is one of the most valuable trademarks in the world, and [Gueijuan Xu] reproduced [its] well-known logo and products in some of the webpages to which Internet users are redirected.”
As a result, Jabur ordered that the infringing domain names be transferred to Nike.
For the uninitiated, the WIPO Arbitration and Mediation Center provides time- and cost-efficient mechanisms to resolve internet domain name disputes, without the need for litigation in court. The alternate dispute process has become a go-to tactic for trademark owners – such as Prada, Balmain, Jimmy Choo, Salvatore Ferragamo, Swarovski, and Hugo Boss, among others – which have collectively filed upwards of 5,000 Uniform Domain Name Dispute Resolution Policy (“UDRP”) in the recent past.
Prada and Miu Miu have been particularly diligent and successful in filing cases with the WIPO, claiming that no shortage of domain registrants with “no rights or legitimate interests in [domains bearing the Prada and Miu Miu trademarks],” are using the domains in bad faith to “divert business” from sellers of authentic Prada and Miu Miu goods.
In recent years, cybersquatting disputes – those that arise from the registration, sale or use of a domain name with the intent of profiting from the goodwill of someone else’s trademark – have accounted for an increasing amount high amount of WIPO’s UDRP caseload, with fashion and banking being among some of the prominent areas for disputes, according to the WIPO.
WIPO Director General Francis Gurry said that UDRP procedures are on the rise “as brand owners face the possibility of further abuse of their trademarks in domains – both old and new.” By combating “opportunistic domain name registration practices,” he says, “WIPO’s services help consumers to find authentic web content and enhance the reliability of the Domain Name System.”