The WIPO uniform procedure for resolving disputes concerning domain names
The expressions “cybersquatting”, as well as “domain grabbing” and “domain squatting”, indicate the illegal activities of those who appropriate domain names corresponding to another’s trademark or to names of famous people in order to achieve a gain on the transfer of the domain or an harm to those who might use it; or, alternatively, utilize the domain name that reflects another’ trade mark, in order to set up one or more web sites that mimic the original, in order to mislead consumers by selling them counterfeit goods. This phenomenon is particularly widespread in clothing and electronic products.
The good news is that the World Intellectual Property Organization (WIPO) has developed a highly effective system to combat this phenomenon, a procedure (Uniform Procedure for Dispute Settlement in the field of Domain Names , hereinafter “the procedure”) which allows the proprietor of a registered trade mark to file a complaint against those who have acquired the ownership of a domain name in violation of the said trade mark, in order to obtain an order of transfer of the illegitimate domain name in their favor.
The conditions for obtaining protection with WIPO under the procedure are as follows:
- that the applicant have a right or legitimate interest in the domain name in dispute;
- that the domain name is identical or confusingly similar to the trademark of the applicant;
- that the disputed domain name was registered in bad faith by the third party.
The Moncler case
A well-known Italian company listed on the stock exchange, Moncler S.p.a., leader in the sportswear sector, owns over 184 retail stores around the world, the “Moncler” registered trademark, plus approximately 500 other trademarks, as well as many names domain and the domain name www.moncler.com, has recently appealed to the Centre for the WIPO arbitration and Mediation, obtaining the massive transfer in their favor of about 50 registered sites in its damage.
Monclear has in fact acted against three individuals of Chinese nationality, holders of about 50 domain names, inclusive of the “moncler” brand, such as www.outletmoncleruk2015.com or www.outletmonclerus.com. The applicant complained that the above domain names were related to portals that imitated in whole or in part the official Moncler’s website, with the aim mislead users to sell them counterfeit goods of poor quality.
The Board recognized Moncler the protection sought. In fact, all the domain names registered by the defendants included the name “moncler” and the Board assessed that the additional words included in the domain name, such as “outlet”, were not enough to avoid the confusion with the applicant’s mark and its official website.
The Moncler has also provided evidence of the fact that the defendants offered to the public counterfeit goods through the domain names disputed, thereby demonstrating the existence of the further requirement of the bad faith registration.
On this basis, the Board has therefore ordered the transfer of 50 abusive domain names in favor of Moncler SpA
A very effective procedure
The Moncler’ case has demonstrated remarkable effectiveness and rapidity of the procedure set up by WIPO: the applicant lodged the appeal on December 9, 2015 and got the decision in their favor 18 January 2016, ie in just over a month.
Within few weeks Moncler got rid of some uncomfortable antagonists, who were taking undue advantage from the unlawful use of its brand and has acquired legal ownership of fifty domain names registered illegally in its damage. It goes without saying that a rapid judicial procedure normally correspond to fairly legal costs. Therefore, we bet that many companies will chose to recourse to the WIPO procedure to defend their brand.