Unless there’s a very specific agenda, cybersquatters don’t often target obscure brands. The lion’s share of domain abuse (and as a result, brand enforcement) is instead heaped upon famous brands.

One reason is that famous brands get more Internet traffic and so a squatted domain that contain a well-known trademark is likely to earn more money for its owner (for example, through pay-per-click ads). Also, the companies behind famous brands tend to have larger bank accounts and one could speculate that, at least in the minds of squatters (who may be unfamiliar with the ACPA or UDRP), such brands are more likely to pay a hefty ransom to recover domains.

But while this means that well-known brands are heavily targeted, there’s the other side of the coin to consider.

The Bigger the Brand, the Bigger the Influence

Court decisions have shown that famous brands enjoy certain advantages in disputes over domain names. For example, courts consider a wider scope of products or services when looking at claimed infringements against famous brands than they do for other brands. For example, even though chewing gum might be viewed as completely unrelated to automobiles, many feel that consumers will still think of the famous car manufacturer if they see the brand BMW on a pack of gum.

As for the UDRP, the fame of a complainant’s brand can impact all three elements of the Policy but is most often addressed in the third: the requirement that a Complainant show that the domain name in question has been registered and is being used in bad faith. Paragraph 4(b) gives examples of what acts can serve as evidence of bad faith and, among them, is item (iv): Using the domain for “commercial gain … by creating a likelihood of confusion with the complainant’s mark….”

Underlying this example is an assertion that a domain owner actually knew of the complainant’s mark. In some cases, respondents have successfully argued that they had no actual knowledge of the mark where, for instance, they live in a distant country in which the complainant and its brand conduct no business. However, it is much more difficult to support such a defense where a mark is famous.

Brand Enforcement of Major Brands

This concept was recently applied in a case involving the assertion of the WORDPRESS trademark against the domain wordpressw.com, which redirected visitors to a rotating selection of other commercial pages to earn affiliate fees. In ordering that the domain be transferred to Complainant, the Panel addressed the bad faith element of the Policy and stated: “Given the fame and distinctiveness of Complainant’s mark and the manner in which the domain name has been used, the Panel considers it reasonable to infer that Respondent’s initial registration of the domain name was intentionally targeted at Complainant or its mark.”

In a similar case involving the domain verizonphone.best, the Panel found that “[t]he disputed domain name appears intended to cause Internet user confusion with Complainant’s trademark that is famous in connection with telecommunications goods and services. Respondent was virtually certain to have been aware of Complainant’s rights in its trademark when it registered the disputed domain name.”

Of course, the devil is in the details and supporting this type of claim requires the submission of sufficient evidence without an assumption that the panel will automatically recognize the fame of the brand. There have been a number of cases where, due to insufficient evidence, complainants walked away from the process very unhappy.

To sum this up: The more famous a brand is, the more likely it is to be copied but the more power its owner has to claim that a cybersquatted domain was intended to cause confusion. However, complaints still need to be well drafted in order to succeed!

Steve Levy
Brand Enforcement: The Upside and Downside of Being a Famous Brand

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