image: Prada

image: Prada

Prada and its little sister label, Miu Miu, were just two of the fashion brands that successfully recovered domain names that were being used in violation of their federally registered trademarks this year in line with a growing trend. The two brands alleged that some 26 domain names were confusingly similar to their own trademarks in a joint complaint filed with the World Intellectual Property Organization (“WIPO”) Arbitration and Mediation Center this summer.

Counsel for Prada and Miu Miu asserted that the domains at issue, which were registered by Chinese individuals between 2011 and 2015, were confusingly similar to their trademarks. They claimed that the domain owners had no rights or legitimate interests in them, and were, instead, using the domains in bad faith to “divert business” from sellers of authentic Prada and Miu Miu goods.

The domains, which include miumiu-shoes.com, prada-2016.com, and prada-hot.net, among others and which offered counterfeit designer goods for sale, were registered to Xie Xiaomei, Zhang Yuanyuan, Zhou Honghai, Deng Wen, Xie Peiyuan, Jianghong Wang Xie Caida, Liu Min and Du Linmei, none of whom responded to the design houses’ complaint. In a decision published this summer, WIPO Arbitration and Mediation Center panelist Douglas Clark ruled in Prada and Miu Miu’s favor, ordering that the domains be transferred to them. Clark held that the domains were all being used in bad faith and that the respondents “clearly knew” about and were intending to trade on the esteemed reputations built by Prada and Miu Miu when they registered them.

As previously indicated, this case is just one example of a larger trend of brands relying on WIPO to recover infringing domain names, most of which tend to serve as home for the sale of counterfeit garments and accessories, as well as cosmetics. 

Amid the roll-out of hundreds of new generic Top-Level Domains (“gTLDs”), such as .GURU, .NINJA and .NYC, trademark owners have increasingly looked to the WIPO Arbitration and Mediation Center, which provides time- and cost-efficient mechanisms to resolve internet domain name disputes, without the need for court litigation. In fact, trademark owners, such as Prada, Balmain, Jimmy Choo, Salvatore Ferragamo, and Hugo Boss, among others, filed 2,754 cases under the Uniform Domain Name Dispute Resolution Policy (“UDRP”) with WIPO in 2015, an increase of 4.6 % over the previous year.

Cybersquatting disputes relating to new gTLDs accounted for 10.5% of WIPO’s UDRP caseload in 2015, which covered a total of 4,364 domain names.  Among these names, .XYZ, .CLUB and .EMAIL were the most common new gTLDs, and according to the WIPO, fashion and banking are the prominent areas for disputes.

WIPO Director General Francis Gurry noted earlier this year:  “As brand owners face the possibility of further abuse of their trademarks in domains – both old and new – they continue to rely on WIPO’s cybersquatting dispute resolution procedures.  By combating opportunistic domain name registration practices, WIPO’s services help consumers to find authentic web content and enhance the reliability of the Domain Name System.”