September 14, 2021

Do your homework before pouncing on a UDRP (domain complaint)

It May Sound Like Your Cat, But That Doesn't Mean You Will Win A UDRP Complaint

The UDRP is intended to provide trade mark holders with an efficient and cost-effective forum to recover domains that infringe upon their trade marks.

The efficiency of the UDRP does not mean that a trade mark owner can file a complaint without first doing their homework into the Respondent and its activities.

Puma, the international footwear and apparel company, found out the hard way in Puma SE v Puma, Exports Pvt Ltd (D2021-1757).

An Indian manufacturer and exporter who makes small leather goods, such as wallets and passport covers registered the domain pumaexports.com on 2 September 1998. It did not use the mark “PUMA” on its products but as part of its company name.

The Respondent had used the word Puma as part of its company names since June 1990, updating it to Puma, Exports Pvt Ltd in March 1996.

To be successful in a UDRP Complaint, the Complainant must prove all three elements below:

  1. The domain is identical or confusingly similar to its trade mark;
  2. The Respondent has no rights or legitimate interests in the domain; and
  3. That the domain was registered and used in bad faith.

The Case

Proving the first element was straight forward but the Complaint came unstuck at the second and third elements.

The onus to prove the second element falls on the Complainant, which it failed to do. The Complainant appears to have overlooked the Respondent’s use of the mark on its website, as a company name and other evidence proving that it had been commonly known by the domain.

The Complainant also failed on the third element as it was conceivable that the Respondent did not intend to take advantage of the Complainant and its reputation. The Panelist listed six possible reasons why it was not bad faith:

  1. “puma” is a type of animal, a large cat.
  2. The Respondent is not selling PUMA branded leather goods.
  3. The Respondent is not selling sports apparel or footwear.
  4. The Respondent’s logo and trade dress is completely different to that of the Complainant.
  5. The Complainant’s Indian trademark registration does not appear to cover the Respondent’s goods.
  6. The Complainant did not enter the Indian market in a significant way until 2005.

The Respondent successfully raised the argument that “This is not a case of cybersquatting, while the Policy’s purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trademark disputes.”

The Respondent also argued that the Complainant was engaged in Reverse Domain Name Hijacking (RDNH), meaning that the complaint was brought in bad faith to try and deprive the Respondent of its domain.

The Panelist stated that “the Complainant is entitled to enforce its trademark rights and to push the penumbra of its protection, but the Complainant is not entitled to file a misleading complaint”.

The Panelist then went on to cite several incorrect and misleading statements, which highlights the dangers of template arguments that are often found in UDRP complaints. The most prominent misleading statements were:

“There are no honest business activities carried out by the Respondent through the nearly identical/deceptively similar domain name.”

“The Respondent’s choice of domain name is clearly fraudulent and with complete knowledge that such adoption is unauthorized.”

The Panelist concluded by finding the Complainant guilty of RDNH and closed with a pertinent statement “A complainant should have clear evidence before alleging dishonesty or fraud, there is no such evidence here”.

Summary

A cat or puma has 9 lives but in the UDRP you have 1 so make sure you have thoroughly investigated your opponent before filing a domain complaint. Guard against template or generic statements.

The reason Lexsynergy has a 100% success rate in domain complaints, worldwide, is because we take the time to assess the potential infringer’s rights to avoid the situation that has scared a PUMA.

Read the full decision here: https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2021-1757

September 01, 2021

.AU Poses Both A Threat And An Opportunity

au Header no caps

Find out more about .AU in our FREE webinar - REGISTER HERE.

Last week it was announced by auDA (the Australian Registry), that the .au direct domain extension will launch on the 24th March 2022. 

This news is bittersweet for business and trade mark holders in Australia, as it poses both a significant threat and opportunity.

If you are unsure about second and third level domains, here is a quick guide:

  • Second level: lexsynergy.AU
  • Third level: lexsynergy.COM.AU, lexsynergy.NET.AU etc.

The Threat:

This change to .au is the equivalent of Australia changing their dialling code from +61 to +6, leading to customers ringing other businesses which they thought were you! Registering your name and trade mark in this new extension will help you to protect your brand online, as owning both the com.au and .au domain extensions will form part of a defensive domain registration strategy.

It will also avoid confusion with a third party should they register it before you, as there are instances where multiple businesses own the same domain, with different third-level domain extensions (you owning the com.au while a third party the net.au). This could lead to customer confusion and a very costly acquisition, if at all possible, should you ever wish to own this .au extension in the future.

The Opportunity:

It provides the opportunity to register a shorter domain, meaning instead of Lexsynergy.com.au (third-level domain) you will be able to register just Lexsynergy.au (second-level domain), meaning you own a domain that is more memorable, sharper and less of a mouthful.

This shorter domain will display well on business cards, emails, billboards etc. and will help provide additional characters in those all-important social media posts. 

What Is The Process:

The allocation of .au domains will be dependant on the pre determined eligibility criteria, evaluating whether you have an existing AU domain, third parties have matching domains and  the application creation date. Remember that you also need a local presence in order to be able to register for a .au domain. Find out how this will impact you using our flowchart below:

.AU Flowchart Final

So why does your brand need to register a .au domain?

If you have a presence in Australia, you need to register a .au domain to ensure that your brand is protected online, with it forming part of a defensive registration strategy.

So what’s next?

The launch process requires strategic planning to make sure you secure your .au domains at the first available opportunity, so reach out to us for assistance with developing a registration strategy, by emailing support@lexsynergy.com, or calling us on +61 73103304 (see our website for our other office numbers).

Find out more in our FREE webinar on Monday 20th September - REGISTER HERE

August 20, 2021

Where did the 'O' go?

5 Considerations Before Sending a Cease and Desist (8)

Cameroon is a west-central African country that has been blessed or cursed, depending on your view, with the country code CM, which is used as its domain extension .CM.

The .CM domain extension is confusingly similar to the world’s most popular extension .COM, and this confusion has made .CM a prime target for squatting activities.

Whilst undertaking our online enforcement activities we have noticed that .CM squatting is on the rise. This increase is fueled by Cameroon’s absence of a domain dispute resolution procedure and an effective trade mark enforcement program through the local courts. 


Squatters are aware of these shortcomings and know that most domain disputes will end with them receiving remuneration for their trade mark infringing activities.

We have come across a few well-known trade marks that have fallen into the .CM squatters trap:

.CM dennys example

Official Domain

.CM Squatter

Dennys.comDennys.cm
Tabao.comTabao.cm
Esteelauder.comEsteelauder.cm
Hersheys.comHersheys.cm
Primelocation.comPrimelocation.cm
Trademarkia.comTrademarkia.cm

 

Trademark law firms are not immune from the .CM threat as is apparent by the online trade mark law firm trademarkia.com who seemingly has been targeted by trademarkia.cm.

Therefore, even though you may not conduct business in Cameroon, the .CM domain extension should be included in any defensive domain strategy program. There is no need to register everything under the sun, but make sure that at least the .CM that matches your main .Com website is registered. The cost of managing a .CM domain is far lower than trying to recover it, and although we have recovered a fair number of .CM domains, it is always advisable to be proactive in this space.

If you would like to register a .CM domain, please email your account manager or support@lexsynergy.com