Diamonds can be forever, and so can domain names as De Beers defeats domain name piracy

Trade mark piracy has existed for decades. With the development of the online channel, piracy has extended to the use of a brand owner’s domain names in bad faith.  But very recently, in a ruling of the first of its kind, De Beers succeeded in having a domain name transferred that had been registered at .feedback (one of the new Global Top Level Domain name registries (gTLD)).  This is a good news story for brand owners. It demonstrates that domain names that use a brand in bad faith will be transferred to the trade mark owner even under the new gTLD registries.

The site, debeers.feedback, as the name suggests purported to be a feedback site about De Beers but on closer analysis most of the content on the site was posted after De Beers had complained about the domain name.

De Beers therefore complained through a dedicated Dispute Resolution Service operated by the World Intellectual Property Organisation (WIPO).  This is a quick and cost effective way of getting a domain name back. 

WIPO decided that the domain name was registered in contravention of the domain name rules because:

1. the debeers.feedback domain name was identical or confusingly similar to a trade mark in which De Beers had rights;
2.  the domain name owner had no rights or legitimate interests in respect of debeers.feedback;  and
3.  the debeers.feedback had been registered and was being used in bad faith.

Since the new gTLD launch 1179 new gTLDs have been approved.  These include

• .fashion.
• .store and
• .shopping. 

This has increased the number of potential domain name applications exponentially.  It is a real headache for brand owners as it means their brands can be registered as domain names as the registries often operate on a first come, first serve basis. 

Take home points

Steps can be taken to defeat trade mark piracy online.  Accordingly, if your brand name is used unlawfully on the Internet – whether as a domain name or otherwise – there are a number of quick and relatively cheap ways to prevent such use including:

1. Register your brand at the Trade Marks Clearing House that acts as an early warning system to prevent third parties from registering your brand as a domain name.
2. Use Notice and Take down provisions when there is unlawful use of your trade marks on a website.
3. Use alternative dispute resolution mechanisms such as the one De Beers used for a quick and cheap successful outcome.

The digital protection of your brand in the fashion industry is now more important than ever and preventing the misuse of your brand is vital to maintaining its exclusivity.