Domain names and bad faith registrationsPrint publication
The Uniform Domain Name Dispute Resolution Policy (UDRP) is a procedure for resolving disputes concerning domain names ending in a generic top level domain (for example, .com, .net and .org) and also certain country code top level domains.
The World Intellectual Property Organization (WIPO) Arbitration and Mediation Center is one of the bodies that hears these disputes. To obtain an order that a domain name should be cancelled or transferred, a complainant must prove that:
- it has rights in a trade mark which is identical or confusingly similar to the domain name;
- the respondent has no rights or legitimate interests in the domain name; and
- the domain name has been registered, and is being used, in bad faith.
The fashion brand Jimmy Choo recently succeeded in a case brought before the WIPO Arbitration and Mediation Center. The complaint concerned the registration of the domain names jimmy—choo.org and jimmychooutletsale.org. Both were registered with an individual identified as panluzhong, a Chinese resident. Jimmy Choo submitted that the disputed domains incorporated its registered trade mark JIMMY CHOO with only “slight and insignificant modifications” and that the websites attached to the domain names sold similar goods to those of Jimmy Choo.
The Panel agreed, finding that the disputed names were “confusingly similar”. The addition of the hyphens between “jimmy” and “choo” and the suffix “utletsale” were immaterial in reaching that conclusion. The Panel also found that the respondent had no legitimate interests in the domain names and that the names had been registered in bad faith. It concluded that it was clear that the respondent was intending to trade off the back of Jimmy Choo’s reputation and brand.