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A David and Goliath-style cybersquatting case involving a ‘joke’ website, consisting of a picture of a horse superimposed over a supermarket, recently came to a conclusion. Kitty Rosser, an associate at Birketts LLP, explains the background to the case and the legal issues it raised.
Since late 2013, the domain name landscape has undergone significant change with the release of thousands of new generic top-level domains (gTLDs). Historically, registrants could only choose from around 20 different gTLDs (such as .com, .net. .biz etc). The decision to release new gTLDs offers a solution to the constantly increasing demand for a finite resource and allows registrants a new opportunity to further define their offerings and stand out in the online space. However, the new gTLDs also pose some challenging brand protection issues.
In late February this year, cartoonist Jeph Jacques took advantage of the release of the new gTLD .horse to register the domain Walmart.horse. He pointed the domain to a single page website, the sole content of which was an image of a horse superimposed in front of a Walmart store front. In March Jacques received a cease and desist letter from Walmart alleging infringement of its trade mark rights. Jacques responded to Walmart arguing that, as his site was an obvious parody, his use of the Walmart mark fell within the fair use defence (note that while this is a defence under US trade mark law there is no equivalent provision in UK law). In April Walmart filed a claim with the World Intellectual Property Organisation (WIPO) under the Uniform Domain Name Dispute Policy (UDRP). Jacques removed his site and voluntarily transferred the domain to Walmart before any decision was made under the UDRP.
To have succeeded in its claim under the UDRP, Walmart would need to have been able to show that:
(i) the domain name was identical or confusingly similar to a trade mark or service mark in which it had rights
(ii) Jacques had no rights or legitimate interest in respect of the domain, and
(iii) Jacques had registered, and was using, the domain in bad faith
While it is clear that Walmart would have had little trouble in fulfilling the first test, commentators are almost unanimous in their view that Walmart would have encountered significant, and probably insurmountable, difficulties in overcoming the tests under limbs (ii) and (iii). Of particular relevance are the facts that Jacques’ site appeared to be a genuine parody falling within fair use and that there was no indication that Jacques intended to make any commercial use of the site.
There is no fixed definition of legitimate interest under the UDRP and this will therefore fall to be assessed on a case by case basis. However, the UDRP does include a non-exhaustive list of examples of legitimate interest which provide a useful insight into this principle. The examples given include historical use of the domain by the respondent for a bona fide offering of goods or services, use by the respondent of a domain name which is the same as a name by which it is commonly known and non-commercial or fair use of a domain with no intent to mislead, divert custom or tarnish the mark at issue.
While the introduction of the new gTLDs has not necessarily led to new types of offences against rights holders, they have certainly exacerbated existing issues and have necessitated the adoption of new approaches to the protection of online space. The Internet Corporation for Assignes Names and Numbers (ICANN), the body responsible for overseeing the domain name system, has introduced a range of new options to assist rights holders. Rights holders registering their marks with the Trade Mark Clearing House have the opportunity to buy-up new domains prior to general release during a sunrise period or to be notified of third parties seeking to register marks during a set claims period. The Uniform Rapid Suspension (URS) system is designed as a quicker and cheaper alternative to the UDRP for claims in respect of the new gTLDs. Rights holders also now have the option of taking action against the registries themselves under the new Public Interest Commitment Dispute Resolution Procedure rather than pursuing individual registrants. Individual registries have also begun offering services designed to offer rights holders protection, such as Donuts’ Domains Protected Marks List (DPML) which operates on a similar basis to the Trade Marks Clearing House but claims to provide a wider scope of protection. The challenge for businesses now is in identifying how to best integrate these new tools and adjusting existing strategies to ensure that their approach remains both effective and cost efficient in a new environment.
Reports to date suggest that registrations for the new gTLDs currently make up less than 1% of total domain registrations and it remains to be seen whether the new gTLDs will capture the public imagination and take off in a significant way. At this stage, I think it is a case of watch this space.
My advice would be for lawyers to ensure their clients are aware of the introduction of the new gTLDs, particularly those such as .xxx, .porn and .adult which businesses may view as posing a particularly high risk. Lawyers should ensure that they have familiarised themselves with the new services available such as the URS and the Trade Marks Clearing House in order that they can assist clients in putting together effective strategies to prevent harm and can advise on the most appropriate actions in the event that difficulties are encountered.
Interviewed by Alex Heshmaty.
This article was republished with kind permission of WIPIT’s sister site Lexis®PSL IP&IT. For a free trial, please click here.
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