Fashion designer Gucci and online ticket website StubHub have recovered hundreds of domain names from cybersquatters attempting to drive traffic to their sites.
In two separate Uniform Domain Name Dispute Resolution Policy (UDRP) cases, 176 domain names baring a “confusingly similar” resemblance to the companies’ trademarks and being used in bad faith were transferred.
StubHub operates the world’s largest online ticket marketplace and provides services to buyers and sellers of tickets for sports, concerts and other live entertainment events. It was set up in 2001 and is registered under the trademark STUBHUB.
Founded in 1921, Gucci is the owner of thousands of trademarks around the world, including GUCCI.
According to the panel, 123 domain names registered by HiChina Zhicheng Technology, in Shenzhen, China, have typographical misspellings of the STUBHUB trademark by the addition of just one letter or numeral.
The “highly distinctive” GUCCI marks were registered alongside the names of a number of its products in 53 domain names registered by Network Solutions LLC in Virginia, USA.
David Taylor, partner at Hogan Lovells LLP, said both UDRP cases contained a “larger number” of domain names than usual.
He told WIPR that the combination of Gucci’s trade mark with “non-distinctive” words such as “boots” and “online” showed that they were “clearly” being targeted.
“When deciding such cases, one always has to consider whether the registrant had the complainant in mind, and here it is abundantly clear that they did,” he said.
Taylor suggested that the soon-to-be-implemented Uniform Rapid Suspension System (URS) may be a better solution for similar, clear-cut cybersquatting cases.
The URS, which was designed by the Implementation Recommendation Team (IRT), a team of Internet stakeholders, will suspend domain names rather than transfer them to complainants.
Taylor said: “These are precisely the type of cases the IRT had in mind with the design of the URS.”
“One has to ask whether the complainant actually wants to have these recovered domain names in their domain name portfolio, thereby paying annual management fees,” he added.
"That was the benefit of suspension of the names rather than transfer, and specifically cases like these two would be ideal for the URS rather than the UDRP, in my view.”
This article was first published on 25 June 2013 in World IP Review
gucci, stubhub, udrp, urs, wipo