Cybersquatting, or piggy-backing on the reputations of well-known companies and brands by registering corresponding domain names, is seen as an effective though unscrupulous practice of making fast bucks. With rise in awareness of cybersquatting practices as well as the value of domain names as trademarks, trademark owners are initiating more actions now to recover their intellectual property online, before arbitration panels of organizations such as WIPO as well as national level domain recovery agencies (such as NIXI, the National Internet Exchange of India).
But cybersquatters generally rely on the advantage in numbers- there are such a huge number of domain variations and domain name extensions to choose from nowadays, that registering one trademark across a multitude of domains by a cybersquatter can make individual recovery of the said domains extraordinarily expensive for a company and therefore extraordinarily profitable for a cybersquatter. In the case domain dispute proceedings are instituted, the cybersquatter only loses a domain or two. For a serial cybersquatter, that does not end up making much of a dent in the pool.
Domain dispute proceedings provide three basic grounds which a complainant is compulsorily required to prove in order to establish their rights to a domain name:
- That the disputed domain name comprises of a mark in which they have rights;
- That the registrant has no rights or legitimate interests in the said domain name;
- That the registrant has registered the disputed domain name in bad faith.
While grounds (i) and (ii) are fairly straightforward to prove with the help of use in trade and trademark registrations (or lack thereof), ground (iii) offers the opportunity for a more complex argument.
In proving mala fide or bad faith registration of a domain, the UDRP stipulates that factors such as:
- Registration for the sole purpose of selling, renting or otherwise transferring the disputed domain name to the complainant for valuable consideration;
- Registration intended to prevent the rightful owner of the trademark from reflecting the same in a corresponding domain name;
- Registration for the purpose of disrupting the business of a competitor; or
- Registration/use of the disputed domain name for the purpose of diverting traffic from the website of a competitor or rightful trademark owner by creating initial interest confusion amongst the relevant consuming public.
The above-mentioned factors may be proven in a number of different ways that depend on the particular facts and circumstances of each case.
Serial cybersquatting, where a cybersquatter unscrupulously registers domain names across the board pertaining either to one brand or a number of brands/trademarks can be used to evidence the mala fide or bad faith intentions of a registrant as it serves as ample proof of the registrant’s motive to profit off the reputation of others without making legitimate or fair use of the registered domain names.
Various WIPO Arbitration Panel have recognized serial cybersquatting to be evidence of mala fide registration as recently as in the decision rendered in the case of Little Acorns Fostering Ltd. v. W P, The Cloud Corp / Al Perkins, D2017-1776 on October 18, 2017 wherein the learned sole arbitrator ruled in favour of the complainant who was able to establish that the registrant had taken over their domain after it was inadvertently allowed to expire and had subsequently claimed exorbitant sums of money when the complainant had approached him to acquire the domain without resorting to legal proceedings, and had further previously engaged habitually in such activity, even having prior WIPO rulings passed against him.
A few earlier notable domain dispute decisions held against the registrant on the grounds of serial cybersquatting are The Toronto-Dominion Bank v. DOMAIN CONTROLLER / YOYO EMAIL, NAF Claim No. FA1506001622018; Sanofi v. Aleksei Shutov, WIPO Case No. D2016-0311.
The Universal Domain Name Dispute Resolution Policy (UDRP) provides for including multiple infringing domain names belonging to a single registrant to be acted against within a single domain complaint. In fact, in recognition of the problem of serial cybersquatting, WIPO has come up with a dedicated procedure called the Uniform Rapid Suspension System (URS) which is an even more simplified procedure than the UDRP for filing a complaint against multiple infringing domain names being held by one registrant. It aims to provide a faster and more cost-effective method to trademark owners plagued by serial cybersquatting.