Famous brands risk having their trade marks hijacked online by cybersquatters who are taking advantage of a new range of domain name registration opportunities.
Up to 1,400 new generic top-level domains (gTLDs) – the suffixes visible to users at the end of a domain name – are being rolled out in stages by the Internet Corporation for Assigned Names and Numbers (ICANN).
They are designed to increase domain name availability, change the way people find information online, and give the ability to better define sites, brands, businesses or organisations.
The gTLD '.BIKE' was one of the first to launch. A sample study of '.BIKE' by Brad Newberg, a partner at Reed Smith, found that, taking 20 of the prominent bicycle brands and looking at corresponding '.BIKE' registrations, all had been registered as domain names - but only four of the 20 were clearly registered by the actual brand owner. A further three had been reserved by the domain name registry Donuts for unknown purposes.
Brands slow to react
Another bike maker, Canyon, recently recovered the cybersquatted 'canyon.bike' domain name, which had been registered by a third party only seven seconds after it became publicly available. Other brand owners will have to consider similar action where their brands are encroached upon by cybersquatters.
Emma Lenthall, partner at Reed Smith LLP, comments on the challenges created by the recent expansion of the domain name system, and the implications for brand owners:
"Brand owners are still taking time to get used to gTLDs, and we have not yet seen the predicted rush of complaints. However, the reality is that brand owners risk being caught out by the expansion of the domain name system and will need to consider how to react if their brands are encroached upon by cybersquatters.
Some brand owners have already taken a proactive approach to domain blocking and registrations, and/or as an initial step have registered with ICANN's Trademark Clearinghouse.
However, with up to 1,400 new gTLDs proposed, the challenge for brand owners to comprehensively prevent third party registrations of domain names that overlap with their trade marks is set to continue.
Action can be taken
In clear cut cases, brand owners can use the new Uniform Rapid Suspension (URS) system, which allows swift suspension of infringing domain names. The National Arbitration Forum recently rendered a URS decision in favour of IBM in only seven days, suspending the infringing domains ibm.guru and ibm.ventures.
In less blatant cases, or where the brand owner requires the domain name to be transferred to it (rather than merely suspended), claims can be made under the existing Uniform Domain Name Resolution Policy (UDRP), under which Canyon Bicycles has just successfully recovered the domain canyon.bike.
Brand owners also have the option of claiming for trade mark infringement, though this will depend on the nature of the use, the law of the appropriate jurisdiction, and the ability to track down the infringing party.
The latter can be tricky, particularly as some registrars offer privacy services that allow registrants to mask their identities.
The full list of brands sampled in the Reed Smith study (correct as of 10 February 2014) is as follows:
- CANNONDALE.BIKE: The domain has been registered by a third-party who seems to have no relation to the brand owner.
- ELECTRA.BIKE: Registered by a Russian bicycle distributor.
- FUJI.BIKEA WHOIS: This name has been reserved by the registry for the gTLD, Donuts. It is unclear why.
- GIANT.BIKE: Actually registered by the brand owner.
- HARO.BIKEA WHOIS: This name has been reserved by the registry for the gTLD, Donuts. It is unclear why.
- HUFFY.BIKE: The domain has been registered by a third-party who seems to have no relation to the brand owner.
- JAMIS.BIKE: Actually registered by the brand owner.
- KESTREL.BIKE: Actually registered by the brand owner. The company that owns Kestrel also owns the Fuji brand.
- LEMOND.BIKE: The domain has been registered by a third-party who seems to have no relation to the brand owner.
- MONGOOSE.BIKE: The domain has been registered by a third-party who seems to have no relation to the brand owner.
- NEILPRYDE.BIKE: The domain has been registered by a third-party who seems to have no relation to the brand owner.
- RALEIGH.BIKE: The domain has been registered by a third-party who seems to have no relation to the brand owner.
- REDLINE.BIKE: The domain has been registered by a third-party who seems to have no relation to the brand owner.
- RIDLEY.BIKE: Registered by a German company that produces solar panels. Unclear why.
- SANTACRUZ.BIKE: Registered through GoDaddy's Privacy Protect system, seemingly no relation to the Santa Cruz brand.
- SCHWINN.BIKE: Registered by a company that sells parking gates and barriers, not bicycles. Unclear why.
- SCOTT.BIKEA WHOIS: This name has been reserved by the registry for the gTLD, Donuts. It is unclear why.
- SPECIALIZED.BIKE: The domain has been registered by a third-party who seems to have no relation to the brand owner.
- SUN.BIKE: Registered by a distributor of bicycles, parts, and accessories, but not part of the company that owns the Sun brand.
- TREK.BIKE: Actually registered by the brand owner.
Emma is a commercial litigator and she heads Reed Smith's Intellectual Property, Media, Advertising and Technology disputes group in London.
