Domain Disputes

Lexsynergy is the go-to company for all types of domain name dispute across a significant number of domain name extensions. Our services include drafting complaints on behalf of law firms or trade mark owners, managing the submission and administration of the complaint and ultimately the transfer of the domain name.

We highlight below some of the successful cases we have handled over the last few years allowing us to maintain our 100% record in such cases.

CHINESE DOMAIN DISPUTE RESOLUTION POLICY (.CN)

Domain sasol-wax.cn and sasol-wax.com.cn
Complainant Sasol Limited
Decision Click here
Result Transfer to Complainant
Case Comments

It is only possible to rely on the CN Domain Name Dispute Resolution Policy (cnDRP) if the disputed domain name is less than two years old. After two years the recovery process will have to take place via the local Chinese legal system, which can be lengthy and expensive.

Lexsynergy identified the above domain names within the two year period allowing our client to take advantage of the cnDRP. Lexsynergy also successfully argued for the complaint to be heard in English.

This case highlights the importance of monitoring the use of a trade mark in China and around the world so infringements can be identified and handled appropriately within sufficient time.

 

NOMINET DISPUTE RESOLUTION SERVICE (.UK)

Domain sanlaminvestmentmanagement.co.uk
Complainant Sanlam Limited/ Sanlam Netherlands Holdings B.V.
Result Transfer to Complainant
Case Comments

The Complainant is one of the largest financial service groups in Africa, primarily focusing on short-term insurance, personal financial services such as estate planning, trusts, home and personal loans, savings and linked products, investment, asset management, property asset management, stockbroking, risk management and capital market activities.

The domain name is confusingly similar to the Complainant’s Sanlam trade mark and was argued to be an abusive registration in that the Respondent:

  • set-up a financial and investment related website was accessible from the domain name, containing advertising links via the Google affiliate program;
  • the Respondent had engaged in a pattern of registering domain names that infringe upon the registered rights of trade marks owners; and
  • the Respondent’s activities were targeted towards financial institutions.

NEW ZEALAND DISPUTE RESOLUTION SERVICE (.NZ)

Domain cunard.co.nz
Complainant Carnival PLC (trading as Cunard)
Decision Click here
Result Transfer to Complainant
Case Comments

The domain name was registered to disrupt the business of the Complainant in New Zealand. Lexsynergy was able to prove that the Complainant had trade marks rights and business activities in New Zealand under the mark CUNARD and that it was an unfair registration in the hands of the Respondent.

Each country extension has its own rules and procedures to recover infringing domain names, some are more straightforward than others. Due to the discrepancy of domain name dispute procedures around the world, it is essential that domain names identically matching a trade mark are registered in all the countries where the mark is used or where business is conducted under that mark.

SOUTH AFRICAN ALTERNATIVE DISPUTE RESOLUTION POLICY (.ZA)

Domain mybidveststory.co.za
Complainant Bid Industrial Holdings (Pty) Limited
Decision Click here
Result Transfer to Complainant
Case Comments

The Respondent contended that it registered the domain name to tell the Complainant’s story, yet they did not elaborate upon that statement. The Complainant had previously registered the domain name mybidvest.be (country extension for Belgium), which was similar to the disputed domain name. The Respondent had asked the Complainant to make an offer to purchase the domain name, which is a common justification when establishing an Abusive Registration under the Alternative Dispute Resolution Policy. It was established that the Respondent had engaged in questionable domain name registrations targeting well-known South African companies.

ALTERNATIVE DISPUTE RESOLUTION POLICY (.EU)

Domain paperlesspost.eu
Complainant Paperless Inc
Decision Click here
Result Transfer to Complainant
Case Comments

One of the Complainant’s German-based competitors registered the domain name to prevent the Complainant from using a domain name matching their trade mark under the regional European Union extension .eu. The domain name was used to divert unsuspecting users to the Respondent’s website in order to profit from that confusion.

It was found that the domain name was confusingly similar to the Complainant’s trade mark as recognised under EU law and the Respondent was acting in bad faith, since it had engaged in a pattern of conduct in registering a series of other domain names that directly related to the Complainant’s trade marks.

.IN DISPUTE RESOLUTION POLICY (.IN)

Domain lycamobile.in
Complainant Pettigo Comercio Internacionl Lda
Decision Click here (link coming soon)
Result Transfer to Complainant
Case Comments

The Respondent registered the domain name to block the trade mark owner from using its trade mark as a domain name in India. The decision highlighted that the Respondent was aware of the Complainant’s business and deliberately took steps to cause confusion by directing users to his website. This case highlights the importance of securing domain names that match your word trade mark on or before filing the mark.

 

UNIFORUM DOMAIN DISPUTE RESOLUTION POLICY (UDRP)

CATEGORY: RETAIL

Domain wwwlifeproof.com
Complainant Treefrog Developments, Inc.
Decision Click here
Result Transfer to Complainant
Case Comments

Typosquatting is the practice of registering domain names that are misspellings or likely typographical errors of heavily trafficked sites or well-known trade marks. The most successful form of typosquatting is the use of the prefix “www” (World Wide Web) as part of a domain. This type of registration relies on the Internet user omitting the dot (period or full stop) between “www” and the domain name.

In this case the Respondent registered www as part of the domain name so it could profit from internet users who misspell the domain name in a direct browser search. One dot is all it takes for Internet traffic to be diverted thus stressing the importance of an effective domain name watch service to identify such registrations.

 

Domain otterbox.shop
Complainant Otter Products, LLC
Decision Click here
Result Transfer to Complainant
Case Comments

New domain extensions have added a new marketing dimension to domain names by describing the business or service offered under a particular extension (e.g. .club, .bank and .loan).

In this matter a squatter targeted companies offering protective cases for mobile devices. He knew that a consumer would assume that the trademark appearing before the .shop extension is the official online shop of the trademark owner.

Lexsynergy established that the domain name was registered in bad faith, which is one of the three UDRP elements that must be provided to be successful in such a complaint.

 

CATEGORY: SPORT

Domain fiabrussels.com
Complainant Federation Internationale de l'Automobile
Decision Click here
Result Transfer to Complainant
Case Comments

Lexsynergy was able to recover a domain name previously registered by the Complainant. The Respondent registered the domain name, forwarding the domain name to a blog that contained a number of posts about cars.

if a domain name is not renewed it runs the risk of being registered by an unauthorized third party. It is essential to have a sound domain name renewal policy. 

 CATEGORY: SOFTWARE

Domain pcmaticreviews.com
Complainant PC Pitstop, LLC 
Decision Click here
Result Transfer to Complainant
Case Comments

The online comparison of products or services can be problematic for trade mark owners. However, there are options available where the review is set-up as an elaborate scheme to discredit a product, redirect Internet traffic to a competing product/service or to download harmful software.  

The domain name in this case resolved to a website displaying an image of a comparison table purporting to compare the products offered by Complainants competitors. The comparison table was, in fact, a single image, such that clicking on any part of the table or what appeared to be a button would open an executable software file allowing the user to download software which competed with Complainant’s software.

 

Domain wwwsophos.com
Complainant Sophos Limited
Decision Click here
Result Transfer to Complainant
Case Comments

Typosquatting is the practice of registering domain names that are misspellings or likely typographical errors of heavily trafficked sites or well-known trade marks. The most successful form of typosquatting is the use of the prefix “www” (World Wide Web) as part of a domain. This type of registration relies on the Internet user omitting the dot (period or full stop) between “www” and the domain name.

In this case, the Respondent registered www as part of the domain name so it could profit from internet users who misspell the domain name in a direct browser search. One dot is all it takes for Internet traffic to be diverted thus stressing the importance of an effective domain name watch service to identify such registrations.

 

Domain custvox.net and custvox.com
Complainant CustVox AG
Decision Click here
Result Transfer to Complainant
Case Comments

The UDRP requires the Complainant to prove three predefined elements. If one element cannot be proved, then the Complaint will fail. Matters such as a dispute of employment or ownership of a business fall outside the scope of the UDRP.

In this complaint, the Respondent was the wife of a former CTO of the Complainant. The CTO was tasked with maintaining the Complainant’s domain names and upon the termination of his employment, the domain names were transferred by the CTO to the Respondent. The domain names were then deactivated interrupting all the services connected to the domain names.

Lexsynergy was able to prove the three elements, in particular, that the actions of the CTO and the Respondent fell within the ambit of bad faith.

CATEGORY: BANK / FINANCIAL SERVICES

Domain standardbank.tel
Complainant The Standard Bank of South Africa Limited
Decision Click here
Result Transfer to Complainant
Case Comments

Respondent had registered several domain names that were identical to or included well-known South African trade marks and had previous UDRP decisions decided against it although under an alias. Lexsynergy, through its investigations, established a common link between the alias and Respondent. The Respondent attempted to conceal its original use of the disputed domain name by later substituting financial service links with links to blood banks, donor banks, and sperm banks.

This case highlights that a successful UDRP complaint is dependent on the prior sound investigation and evidence capture before firing-off cease and desist emails or commencing recovery actions.

 

Domain forexthink.com, forexthink.biz, forexthink.info, and forexthink.org
Complainant TF Global Markets Pty Ltd
Decision Click here
Result Transfer to Complainant
Case Comments

The Respondent transposed the Complainant’s trade mark in the four disputed domain names, directing them to competing services. The Panel in the decisions stated, “the use of transposed words, similar to transposed letters does not suffice to differentiate the disputed domain name from Complainant’s mark to create a separate and distinct mark.”

 

Domain novaeinsurance.com
Complainant Novae Group Plc
Decision Click here
Result Transfer to Complainant
Case Comments

Financial services sector is prone to phishing activities. In this case, a phishing website was set-up to look like the Complainant’s website. Lexsynergy promptly shut down the website and then filed a UDRP complaint, on behalf of the Complainant, to recover the domain name. This case highlights the importance of having watch services in place to identify phishing or suspicious websites targeting your business.

CATEGORY: ACTING FOR RESPONDENT 

Domain visualvoice.com
Complainant Arthur Yarlett
Decision Click here
Result Complaint denied
Case Comments

Lexsynergy represented the Respondent who had received a frivolous UDRP complaint by the trade mark owner oF VISUAL VOICE. The Complaint was submitted while the Respondent was on holiday resulting in the submission of an urgent Response. The Complainant’s trade mark post-dated the Respondent registration of the disputed domain name. Lexsynergy successfully established that the Respondent had legitimate rights and interests in the domain name.

In respect of the establishing bad faith the panel stated, “Apart from unusual cases of a respondent’s advance knowledge of a trademark, it is not logically possible for a respondent to register a domain name in bad faith contemplation of a mark that does not yet exist or of which the respondent is not aware”.

This case highlights two important points:

  1. Prior to filing a UDRP make sure you can satisfy the three elements of the UDRP.
  2. When registering a domain name make sure you use an email address that is regularly checked so that you are alerted, as soon as possible, to a UDRP complaint. If the Respondent, in this matter, did not respond he may have unjustly lost his domain name.

CATEGORY: ENERGY COMPANIES 

Domain sasol.vip
Complainant Sasol Limited
Decision Click here
Result Transfer to Complainant
Case Comments

The launch of over 800 new domain name extensions has resulted in the increase in domain name squatting. Due to the competitive nature of the “new” domain name market, registry operators are offering significant discounts on their extensions with the result that some such as .top can be registered for less than $1. Affordable domain name extensions are then exploited by the squatters as in this case where the Respondent had registered more than 680 domain names that were identical or confusingly similar to well-known internal trade marks. To frustrate the recovery of such domain names the squatters often register the domain names through a Chinese registrar as the language of the UDRP complaint is determined by the language of the domain name registration agreement. Lexsynergy successfully argued that the complaint should be filed in English without a Chinese translation thus eliminating the high costs of translation for the Complainant.

 

Domain bpgasstation.com
Complainant BP p.l.c
Decision Click here
Result Transfer to Complainant
Case Comments

Squatters register domain names that include well-known trade marks as they result in high traffic volumes. The traffic is then diverted to affiliate links from which the squatter earns revenue on a pay-per-click basis.  

CATEGORY: ONLINE STATIONARY

Domain penheaven.com
Complainant Coles Pen Company Limited 
Decision Click here
Result Transfer to Complainant
Case Comments

This Complaint highlight the importance of employing the service of a corporate domain name registrar (such as Lexsynergy) to ensure that the companies domain names are managed independently of employees and that proactive steps are taken to secure key domain names for future use. The Respondent, an ex-employee, registered the disputed domain name to prevent and disrupt the Complainant from expanding its web presence to the United States and International market by using its trade mark with the .com extension.

 

Domain paperlessport.com
Complainant Paperless Inc. 
Decision Click here
Result Transfer to Complainant
Case Comments

It is impossible or not practical to register every variation of your trade mark as a domain name across 800 new domain extensions and over 600 country extensions. It is therefore inevitable that a typo domain name will be registered as in this case. Once a domain name misspelling is identified the risk it poses to the business should be assessed and if it is high then a recovery action should be considered. In some instances, monitoring the domain name may be an option.

CATEGORY: FILM

Domain lycamovie.com
Complainant Pettigo Comercio Internacional Lda 
Decision Click here
Result Transfer to Complainant
Case Comments

Respondent’s often attempt to sell infringing domain names back to the trade mark owner at an inflated price. They strategically set the purchase price at an amount under the cost of drafting and filing a UDRP complaint to make it attractive for the Complainant to settle. Complainant’s who opt for a settlement, while having high chances of success in a UDRP complaint, expose the business and its marks to future squatting. In this instance, the Complainant did not tolerate such activity and recovered the domain name on its terms.