It has been a busy week for cybersquatters in the new gTLDs. What is a new gTLD? Those are new top level domain names that ICANN launched a couple of years ago, which open up new ways to register on the left hand side of the dot. For example, Davidson.College and WeightWatchers.bio. In these examples, “.college” and “.bio” are the new gTLDs and the material to the left of the dot, namely, “Davidson” and “WeightWatchers,” are known as the “second level” domain names. But these are not mere hypothetical examples. These are two well-known trademarks that were the subject of a recent UDRP complaint and a recent URS complaint, respectively.
In The Trustees of Davidson College v. Somsak Jinaphan/iDigitalAsset LLC, the UDRP Panelist found that the registrant had registered and used the domain name in bad faith. The Panelist ordered that the domain name be transferred to the college. Likewise, in Weight Watchers International, Inc. v. Coroir Jean-marie et al., the URS Panelist found “[i]n general terms, there are no circumstances known to the Examiner that refute the claim of bad faith registration or bad faith use.” That Panelist ordered that the domain name be suspended for the duration of its remaining registration term (you cannot get a transfer order under the URS, which is meant for obvious cases of cybersquatting where the complaining party is okay with just having the domain name put in limbo).
What is striking about both of these examples of cybersquatting in the new gTLDs, is that both marks are fairly well known and there really is no way that someone could have “accidently” registered either of them. What that shows us is that Rights Protection Mechanisms (or RPMS, as those in the trade call them) are insufficient to prevent cybersquatting. Sure, they serve some function in responding to cybersquatting after the fact (or at least they will until GDPR likely makes WHOIS go dark in late May, 2018 making the UDRP and URS proceedings more difficult, less efficient, and costly). But their function is reactive rather than proactive. A squatter simply has no incentive not to squat since neither the UDRP Panelists nor the URS Panelists can order damages or attorneys’ fees. Most squatters just hope to make money off of the domain names and hope either not to get caught or that the brand owner, at significant expense to the brand owner, will use an ICANN RPM to recover the domain name rather than taking the squatter to court to get damages and attorneys’ fees.
It may just be time for the branding community to say “enough” and insist that ICANN come out with robust RPMs that actually deter cybersquatting, rather than just serve as a hammer in a perpetual game of whack-a-mole.