The Internet Corporation for Assigned Names and Numbers (ICANN), which regulates the assignment of Internet domain names, recently began launching new generic top-level domain (GTLD) extensions that have opened up a whole new world for cybersquatters and another level of protection headaches for brand owners.
ICANN is approving as many as 2,000 new top-level domains, including generics like: .pizza, .food, .clothing, .sport, .technology and more. A trademark dispute over one of these new domain names — .bike – has already been fought, and won, by Canyon Bicycle, a German company that sells road, mountain and triathlon bikes.
Rob van Eck, a website designer and bicycle enthusiast from the Netherlands, registered the canyon.bike domain mere seconds after the public launch of the .bike domain and was making money from the canyon.bike website through pay-per-click advertising.
Canyon Bicycle retained legal counsel to get control over the canyon.bike domain through ICANN’s Uniform Domain Name Dispute Resolution Policy (UDRP), which is administered through the World Intellectual Property Organization’s Arbitration and Mediation Center.
According to an account of the canyon.bike dispute on the WIPO website, Canyon was able to prevail in the case by proving three key elements:
The disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights;
The Respondent has no rights or legitimate interests in respect of the disputed domain name; and
The disputed domain name has been registered and is being used in bad faith.
The WIPO administrator who ruled in favor of transferring the canyon.bike domain to Canyon Bicycle found that van Eck was in effect a cybersquatter – someone who registers a domain solely for the purpose of being paid by another person or entity for the rights to use it.
ICANN hopes to prevent cybersquatting and trademark infringement through two new rights protection mechanisms as it releases new domains:
Trademark Clearinghouse – a system that allows trademark owners to pre-register domain names under each new GTLD that matches their registered trademarks during a 30-day “sunrise” period before the GTLD is released to the public.
Uniform Rapid Suspension – a system that allows brand owners to contest the registration and use of a domain name that is identical or confusingly similar to its registered trademark.
Trademark owners can also utilize the Uniform Domain Name Dispute Resolution Policy or bring suit in federal court under the Anti-Cybersquatting Consumer Protection Act to resolve domain disputes.
The choice of which dispute avenue to select depends on a variety of factors. Trademark owners should consult with a Nevada intellectual property attorney to discuss the best option for their particular circumstance.
Las Vegas law firm Marquis Aurbach Coffing (MAC Law) specializes in intellectual property, providing guidance on issues relating to the Internet, technology joint ventures, non-disclosure agreements, technology acquisitions, due diligence, licensing and litigation. Contact us for a thorough IP risk assessment for your company.