As we all know by now, new generic top-level domains (gTLDs) have been rolling out and will continue to do so for the next year or so. As expected, the availability of so many new gTLDs has made fertile ground for cybersquatters and has caused trademark owners to put domain name enforcement higher up on their list of brand protection priorities.
Also, there are some new tools available to help brand owners in their efforts such as the Uniform Rapid Suspension system (URS) which can freeze an infringing domain and take down its website, and the Trademark Clearinghouse (TMCH) which can provide notices to would-be domain registrants when the name they’ve selected includes the trademark of a brand that’s been recorded with the TMCH.
This recent case involving the domain ibm.buzz is not particularly remarkable but it is rather typical of the new generation of cybersquatting scenarios. The domain was registered about four months before the complaint was filed and resolves to a registrar parking page (though when I checked, the page also had pay-per-click links to various computer and software companies). Where the case is rather different from the conventional gTLD dispute is that before the Respondent registered the domain, it was presented with the standard trademark notification from the TMCH explaining that the second-level of the domain contained words or characters which were an exact match for a registered trademark – in this case, IBM. Nevertheless, the Respondent went ahead and registered the domain.
The Panelist noted that “[I]n this case, Respondent’s registration after notification from the Trademark Clearinghouse is indicative of Respondent’s registration in bad faith.” He went on to say that TMCH notification alone typically won’t be enough on which to base a finding of bad faith, and there are cases where a domain applicant might pursue registration notwithstanding the notice – (such as when it is planning to make a fair use of the domain in a fan or criticism website). However, the Panel went on to say that TMCH notification at least shows that the Respondent had clearly been put on notice of the Complainant’s trademark rights and held that “the notification in conjunction with the fame of Complainant’s IBM mark and Respondent’s failure to respond appears to be sufficient to show Respondent’s bad faith registration.”
When the TMCH was first created it was greeted with some skepticism as to whether it would, in fact, deter would-be cybersquatters. While there have been reports that it has served this function to a significant degree, consideration of the notice in UDRP decisions like this highlight its other function as a tool that may be used as evidence by brand owners when seeking to prove that a domain owner acted in bad faith. For the owners of globally famous brands such as IBM, this may be less of an issue since it can be presumed that registrants know such brands. However, I wonder if evidence of a TMCH notice could tip the balance in a brand owner’s favor where the trademark is less well known or only famous in a limited geographical region.
Though it is not a cure-all and its scope is quite limited, I feel that the cost of TMCH registration may be well worth it if it serves as a tool to help brand owners achieve success in their anti-cybersquatting efforts.
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