Domain name disputes are pretty standard items in the
brand protection strategies. Domain name disputes afford brand owners an
expeditious and cheap way of securing ownership rights over infringing domain
names. Case in point, Gucci's significant win over 165 infringing domain
names this month. Each of these infringing domain names was owned by 1 entity,
that operated out of China. The domain names ranged from somewhat standard
infringing domain names (guccidesigner-handbags.com, guccihandbags-group.com,
etc.) to the more fanciful (freegucciyahoo.com, guccihomesale.com,
Domain name disputes are essentially tribunal hearings
that have a very narrow scope and are preferable to court proceedings as (a)
every domain name is subject to domain name dispute policy, regardless of where
the domain name was registered in the world, (b) is limited to evidence and
arguments that are submitted in writing, (c) go the heart of the matter:
ownership of the domain name, (d) enable the tribunal to transfer ownership to
the righful owner, (e) can be decided in months, as opposed to drawn out
litigation that can take years. Every brand owner should incorporate domain
name disputes into their brand protection strategy.
Gucci was able to satisfy the requirements to be awarded
ownership over these domain names by proving:
a) the 165 domain names in question were identical or
confusingly similar to Gucci's trade-marks;
b) the owner of the allegedly infringing domain names did not have legitimate
rights or interests in the domain names; and
c) the domain names were registered and being used in bad faith.
In addition, Gucci was able to demonstrate that the
domain names were largely being used to sell counterfeit products.
The domain name owner did not contest Gucci's complaint
or file submissions to assert its rights over the domain names.
View more from Canada Fashion Law.
Follow Ashlee Froese on Twitter at @BrandFashionLaw.
(c) Ashlee Froese, 2013. All rights reserved.
The contents herein are for informational purposes and do not constitute
legal advice. It is strongly recommended that you seek a professional legal opinion
in the event of a legal dispute.
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