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Domain names: registration, monitoring and disputes, a complete guide to protecting your brand online

nathalie dreyfus Written by Nathalie Dreyfus15/04/2026

In 2025, the WIPO Arbitration and Mediation Center recorded a historic high of 6,282 domain name complaints, a 1.8% increase over 2024, and part of a long-term upward trend that has seen more than 80,000 disputes handled since the UDRP was created in 1999. Behind each case lies a business whose online identity has been hijacked, copied, or exploited for fraudulent gain.

A domain name is far more than a technical address. It is the first point of contact between your brand and the outside world. Managing it strategically, from the initial registration decision through to enforcement proceedings, is a core intellectual property challenge. Dreyfus & Associates has been advising businesses on domain name strategy and litigation for over two decades.

This article sets out the four pillars of an effective approach: strategic registration, proactive monitoring, dispute resolution procedures, and portfolio auditing.

1. Domain name registration: the case for acting early

First come, first served: and why that matters

Domain name registration operates on a first-come, first-served basis. Unlike trademark law, there is no inherent right of priority based on prior use or reputation: the party that registers first prevails, regardless of whether an identical trademark has existed for decades. This is the root cause of most domain name disputes.

The practical implication is straightforward: domain name registration must be integrated into your brand strategy from the outset, not treated as an afterthought following trademark filing. Every delay creates an opening for bad-faith actors.

Prior art searches: an essential first step

Before registering any domain name, Dreyfus & Associates recommends conducting prior art searches covering existing registrations across relevant extensions (.com, .co.uk, .eu, .net, .org, country-code TLDs in target markets), registered trademarks containing identical or similar verbal elements across EUIPO, WIPO, and USPTO databases, company names and trade names that may create conflict, and sunrise period registrations during the launch of new extensions.

This step reduces the risk of registering a name that infringes a third party’s rights, and ensures your digital identity rests on legally sound foundations.

Extension strategy: how broad a coverage do you need?

The ICANN New gTLD Programme has dramatically expanded the domain name landscape. Registering across every available extension is neither practical nor cost-effective. A sound strategy accounts for your industry and the extensions customers naturally expect, your geographic footprint including country-code TLDs such as .fr (managed by AFNIC), .de, and .co.uk, extensions most vulnerable to abuse, and preventive blocking mechanisms such as the DPML, available through the ICANN Trademark Clearinghouse.

For more on new extension risks and opportunities, we invite you to read our dedicated article: : Domain name extensions: a new frontier for trademarks.

2. Domain name monitoring: protecting what you have registered

Why monitoring cannot stop at registration

Registering your domain names is necessary but not sufficient. Cybersquatting has become industrialised: bad-faith actors systematically mine public trademark databases, including those of EUIPO, the USPTO, and WIPO, to identify newly filed or well-established marks and register corresponding domain names before rights holders can act.

The most common forms of abuse:

  • Classic cybersquatting : registering a domain identical or nearly identical to a trademark, with the intent to resell it or exploit the brand’s reputation
  • Typosquatting : registering deliberate misspellings to capture misdirected traffic
  • Phishing : using a lookalike domain to impersonate a brand and deceive consumers or business partners
  • Combosquatting : adding a generic term to a trademark to create a plausible-looking domain

Other forms of infringement have emerged in recent years, such as pornosquatting (the use of a domain name to host sexually explicit content with the intent to damage a brand’s reputation) and brandjacking on social media. Although these practices vary, they are subject to the same legal principles and remedies.

For a detailed breakdown of each form of abuse and the legal remedies available: Domain names: preventing and combating online infringements.

What the data shows

WIPO’s 2025 statistics confirm that the threat is structural, not cyclical. The record number of UDRP complaints reflects a multi-year acceleration driven by the proliferation of new extensions, the automation of abusive registrations, and the growing economic value of online brand identity.

In France, the AFNIC Abuse Showcase documents the scale of abuse for .fr domains. Suppression rates following AFNIC-initiated verifications consistently run between 75% and 85%, illustrating both the volume of abuse and the effectiveness of early enforcement.

For an analysis of the strategic importance of the .fr extension, you can read our dedicated article: : Why the .fr extension is a key asset for digital sovereignty.

An active monitoring service, not just an alert system

Dreyfus & Associates operates a dedicated domain name monitoring service covering automated monitoring of new registrations similar to your trademark, detection of variants and brand combinations, legal assessment of each identified registration, recommended course of action for each case, and coordination with registrars and hosting providers to suspend or transfer infringing domains.

The key principle is early intervention: the sooner an infringing domain is identified and challenged, the greater the likelihood of success. For a comprehensive overview of monitoring tools and methods: Domain name monitoring: protecting your trademark against cybersquatting.

3. Domain name disputes: procedures and strategy

Mapping the available procedures

When a domain name has been registered abusively, the appropriate procedure depends on the extension involved, the urgency of the situation, and the complexity of the case. Our complete guide to domain name disputes covers all available routes.

The UDRP

Established by ICANN in 1999 and administered primarily by the WIPO Arbitration and Mediation Center, the UDRP is the benchmark mechanism for generic extensions (.com, .org, .net and most new gTLDs). It has handled over 80,000 disputes to date.

To obtain transfer or cancellation of a domain name, the complainant must establish that the domain is identical or confusingly similar to a trademark in which they have rights, that the respondent has no rights or legitimate interests in the domain, and that the domain was registered and is being used in bad faith.

The success rate, when a case is properly prepared, is estimated at between 85% and 90%. Proceedings are typically resolved within 45 to 60 days, at a cost of approximately USD 1,500 for a single panellist, well below the cost of court litigation. Since March 2026, WIPO also offers an expedited UDRP procedure delivering a decision in around 30 days.

For procedural best practices: What is the UDRP? A comprehensive guide | 10 best practices for a successful UDRP/URS proceeding.

SYRELI and PARL Expert for .fr extensions

For French country-code extensions (.fr, .re, .pm, .yt, .tf, .wf), the AFNIC offers two alternative procedures: SYRELI, a fully digital procedure delivering a decision within approximately two months at a filing fee of €250, and PARL Expert for more complex cases.

Unlike the UDRP, SYRELI does not require proof of bad faith, making the threshold more accessible in some cases. The fastest SYRELI decision on record: 18 days, in a 2024 public health emergency. For disputes involving ccTLDs outside France: UDRP and ccTLDs: essential insights for recovering a local domain name.

The URS and court proceedings

The URS (Uniform Rapid Suspension) allows the rapid suspension of a new gTLD domain in clear-cut cases of cybersquatting, without immediate transfer. Where extrajudicial procedures are insufficient, trademark infringement proceedings or unfair competition claims before the courts remain available. Nathalie Dreyfus’s accreditation as a court-appointed expert by the French Court of Cassation and the Paris Court of Appeal gives the firm particular standing in complex contentious proceedings.

The cease and desist letter: a lever not to overlook

Before committing to formal proceedings, a well-drafted cease and desist letter frequently achieves a swift resolution, particularly where the registrant is not a professional cybersquatter. According to industry estimates, around 60% of such approaches succeed within 30 days at an average cost of between €900 and €5,000.

4. Portfolio auditing: the step most businesses skip

Many organisations have accumulated domain name portfolios over time without any overarching strategy. Some domains have become redundant; others were registered defensively but are no longer relevant; still others are approaching expiry without anyone having tracked the date, until a third party registers a lapsed strategic domain.

A structured domain name audit, conducted by our domain name law team, inventories all registered domains and renewal dates, assesses the continued relevance of each domain, identifies priority extensions to register or renew, rationalises renewal costs, detects third-party domains reproducing your trademarks, and produces a prioritised action plan.

In the context of M&A transactions or fundraising rounds, a domain name audit forms part of the IP due diligence process. Full analysis: Domain name audit: securing and maximising your digital portfolio | How to protect a domain name.

Conclusion: build a strategy, don’t react to crises

Protecting domain names is not a one-time task. It requires a structured, ongoing approach built around four complementary phases: register strategically, monitor continuously, enforce promptly when abuse is detected, and audit the portfolio periodically.

Dreyfus & Associates advises businesses, institutions, and international groups on every aspect of domain name portfolio management, from strategic registration and preventive blocking to monitoring, extrajudicial proceedings, and enforcement litigation. With a network of over 500 partner firms across 50+ countries, we provide international coverage commensurate with the scope of the challenge.

Frequently asked questions

What is the difference between a domain name and a trademark?

A domain name is a technical internet address; a trademark is a distinctive sign protected by intellectual property law. Conflict arises when a domain name incorporates a trademark without authorisation. A registered trademark is the strongest evidence in both UDRP and SYRELI proceedings.

Someone has registered a domain name identical to my trademark. What are my options?

Depending on the extension involved: a cease and desist letter, a UDRP complaint (generic extensions), a SYRELI procedure (for .fr), or court proceedings. Dreyfus & Associates will assess each situation to recommend the most appropriate route. Our complete guide to domain name disputes sets out all available procedures.

Is the UDRP accessible to SMEs?

Yes. A WIPO UDRP complaint costs approximately USD 1,500 for a single panellist, well below the cost of court litigation, with a typical resolution time of 45 to 60 days. For .fr disputes, SYRELI is even more accessible at €250 in filing fees.

Does the DPML replace continuous monitoring?

No. The DPML substantially reduces the risk on covered extensions, but does not eliminate it. Extensions not covered, typographical variants, and infringing uses without registration all remain undetected without an active monitoring service. Preventive blocking and monitoring are complementary, not interchangeable.

How do I find out who registered an infringing domain name?

Through the WHOIS service, though registrant data is frequently redacted under GDPR for EU-based registrations. Where WHOIS data is unavailable, additional steps may be needed. Our article on preventing and combating domain name infringements sets out the full range of options.

What is SYRELI?

SYRELI is an alternative dispute resolution procedure managed by AFNIC for disputes relating to French ccTLDs (.fr and associated extensions). Fully digital, it delivers a decision within approximately two months. Unlike the UDRP, it does not require proof of bad faith.

Does my business need a domain name portfolio audit?

If your organisation holds multiple domain names, has undergone rebranding, or is involved in an M&A transaction, an audit is strongly recommended. It identifies renewal priorities, coverage gaps, third-party infringing registrations, and technical vulnerabilities. See: Domain name audit: securing and maximising your digital portfolio.

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UDRP: The Côtes de Provence Wine Syndicate loses its fight for the domain name

nathalie dreyfus Written by Nathalie Dreyfus24/02/2025

The present proceedings – Syndicat des Vins Côtes de Provence v. Pascal Leemann-Pluot – Case No. D2024-5223 – concern the domain name <cotesdeprovence.com>, registered on January 29, 2007 by the Respondent, an individual domiciled in the United States. The Complainant, Syndicat des Vins Côtes de Provence, considered that this domain name infringed its rights, in particular its French trademarks and its Côtes de Provence appellation protected by French and European regulations.

Background and Position of the Complainant

  • Appellation and missions of the Syndicate

The Complainant is a trade association created in 1933 to defend and promote the “Côtes de Provence” appellation d’origine contrôlée (AOC), which designates a geographical wine-growing area covering several communes in the Provence region. It emphasizes its high profile, its substantial production (more than 130 million bottles in 2022), as well as its trademarks registered in France.

  • Trademarks claimed

The Complainant relies mainly on two French trademarks:

  1. A purely figurative trademark (no. 1432164) representing a bottle of wine (without any relevant textual element).
  2. A semi-figurative trademark (no. 3753570) including the words “SYNDICAT DES VINS COTES DE PROVENCE”.
  3. He also emphasizes that he is the holder of several domain names containing the expression “cotesdeprovence”, such as <cotesdeprovence.fr>, <odg-cotesdeprovence.fr> or <odg-cotesdeprovence.com>.
  • Arguments about similarity and confusion

The Complainant considers that the domain name <cotesdeprovence.com> reproduces identically the essential element of its signs, namely “COTES DE PROVENCE”. Despite the semi-figurative form of its trademark, it considers that the dominant verbal element is “Côtes de Provence” and that there is therefore a likelihood of confusion.

  • Rights and legitimate interests

The Complainant claims that the Defendant has not been authorized to use the appellation or to register a domain name corresponding to its trademarks or its AOC/PDO. It adds that the use of the site associated with the domain name (pages of pay-per-click advertising links related to the sale or delivery of wine) does not constitute legitimate or bona fide use.

  • Registration and use in bad faith

The Complainant maintains that the expression “Côtes de Provence” enjoys a strong reputation and that it is unlikely that the Defendant was unaware of the existence of the AOC and related rights. The association of the domain name with a site of sponsored links targeting the wine estate would demonstrate a desire to profit from the reputation of the appellation and to create confusion among Internet users, which would characterize bad faith.

Defendant’s position

The Respondent did not participate in the proceedings and did not submit any arguments in response. The only information available is that provided by the Complainant and the Center’s findings, in particular that the site linked to the domain name displayed PPC links relating to wine and that no active use by the Respondent (such as its own commercial site) has been proven.

Panel Analysis

  1. a) Similarity between the domain name and the trademarks
  • The Panel notes that the Complainant’s entirely figurative trademark (no. 1432164) does not include a word element, and therefore cannot be compared textually to the domain name <cotesdeprovence.com>.
  • The second trademark (no. 3753570), registered in 2010 (i.e. after the registration of the domain name in 2007), includes the element “SYNDICAT DES VINS COTES DE PROVENCE”, but is not strictly equivalent to “COTES DE PROVENCE” alone. The Panel recognizes that the Complainant considers it to include a dominant element “Côtes de Provence”, but notes the absence of concrete evidence to demonstrate that this verbal segment would be protected in isolation or considered the pre-eminent part of the trademark.
  1. b) Rights or legitimate interests of the Respondent

In view of the Panel’s conclusion on bad faith (see below), it was not considered necessary to make a final decision on the question of legitimate rights or interests. In accordance with the UDRP procedure, failure to prove bad faith of registration and use is sufficient to reject the complaint, without it being mandatory to analyze the second element.

  1. c) Registration and use in bad faith
  • Priority of the trademark over the domain name

The semi-figurative trademark mentioning “Côtes de Provence” dates from 2010, while the domain name was registered in 2007, which makes it unlikely that there was an initial intention to specifically target the Complainant’s trademark.

  • Reputation of the Complainant vs. reputation of the wine region

Even if the appellation “Côtes de Provence” is recognized in the wine sector, the Panel notes that the Complainant’s argument does not prove that the Respondent was aware of the syndicate or its trademarks in order to exploit their reputation. It is plausible that the Defendant wanted to capitalize on the interest in the region or the “Côtes de Provence” wine, without necessarily targeting the owner of the trademarks or the organization managing the AOC.

  • Advertising links (pay-per-click)

The advertising content of the site is focused on the theme of wine, but does not in itself demonstrate the intention to exploit the Complainant’s trademark. To characterize bad faith, it would have been necessary to establish that the Defendant was aware of the Syndicate and its rights or that it was specifically targeting the trademark.

  • Panel’s conclusion

Not being able to find any evidence proving a deliberate intention to appropriate the reputation of the Syndicate or its brands, and noting moreover that the registration predates the semi-figurative trademark, the Panel finds that the Complainant does not fulfill the condition of bad faith within the meaning of the UDRP Policy.

Decision

In the absence of sufficient evidence of bad faith in the registration and use of the domain name, the complaint is rejected. The domain name <cotesdeprovence.com> therefore remains in the possession of the Respondent.

Conclusion

The Panel, applying the rules of the UDRP, concludes that the Complainant does not meet the requirement to establish bad faith registration and use by the Respondent. Accordingly, the complaint is dismissed.

The UDRP aims to resolve conflicts between trademarks and domain names, not between geographical indications and domain names. In this case, in the absence of a similar trademark and proof of bad faith on the part of the domain name holder, the outcome of this decision is in accordance with the UDRP rules.

This decision highlights the importance of owning a trademark to effectively defend one’s interests when faced with the registration of a domain name.

The Côtes de Provence Wine Syndicate has also acted, this time successfully, via the French administrative procedure PARL-EXPERT to recover the same domain name in <.fr>: add link.

Dreyfus Law Firm, with its expertise in intellectual property and domain name protection, assists its clients in defending their rights against the risks of cybersquatting and infringement of their IP rights. We act in UDRP disputes, analyzing each case from the perspective of trademark law and regulations specific to protected geographical indications (PGI) and controlled designation of origin (CDO). Thanks to our experience in the strategic management of domain name portfolios, we implement tailored solutions to anticipate, monitor and defend the digital assets of our clients, whether they are producers, professional associations or companies in the wine and food industry.

 

FAQ

 

  1. What is the UDRP procedure and when is it applicable?

The UDRP (Uniform Domain Name Dispute Resolution Policy) procedure is a mechanism set up by ICANN to resolve domain name disputes. It applies when the complainant considers that a domain name is identical or similar to a trademark that they hold, that the defendant has no right or legitimate interest in the domain and that they have registered and are using the domain in bad faith.

  1. Can a domain name containing a protected designation of origin (PDO) be recovered?

The protection of designations of origin is governed by specific regulations (French and European, for example). However, the UDRP generally only recognizes rights related to trademarks. It may therefore be more difficult to claim a domain name on this basis alone. Legal action based on PDO or unfair competition laws could be an alternative.

  1. Can a semi-figurative trademark be sufficient to obtain a domain name via the UDRP?

It all depends on the textual elements of the trademark. If the domain name in question only includes part of a semi-figurative trademark, the chances of success may be reduced, especially if this part is not clearly identified as dominant.

  1. Can a domain name registered before a trademark be recovered under the UDRP?

As a general rule, if the domain name was registered before the trademark claimed by the complainant, it is difficult to prove bad faith. However, there are some exceptions, particularly if the defendant was already aware of the trademark and intended to exploit it abusively.

  1. Is the display of advertising links (pay-per-click) on a site proof of bad faith?

Not necessarily. Although some cases of cybersquatting are characterized by the exploitation of a domain name for sponsored links, bad faith must be demonstrated. If the domain contains a generic or geographical term and the defendant does not specifically target a trademark, it may be difficult to prove abusive use.

  1. Can a right to a designation of origin be invoked if it is well known?

The reputation of an appellation of origin can be a factor, but it does not automatically confer a right under the UDRP. As the procedure is trademark-oriented, it is often preferable to resort to actions based on the specific regulations of appellations or on the law of unfair competition.

  1. What can be done if a UDRP complaint is rejected?

If a UDRP complaint is rejected, other options exist:

  • Legal action: depending on the country, it may be possible to invoke trademark law, appellation of origin law or unfair competition law.
  • Negotiation: an amicable approach can be attempted with the domain holder.
  • Monitoring and future actions: monitor possible new uses of the domain and intervene if misuse is detected.
  1. How can a name associated with a designation of origin be effectively protected?
  • Register a word mark including the designation as soon as possible.
  • Register the relevant domain names before a third party does.
  • Actively monitor domain registrations and online uses.
  • Act quickly in the event of a disputed registration, via a UDRP procedure or legal action. 

Dreyfus Law Firm works in partnership with a global network of lawyers specializing in intellectual property. 

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UDRP and ccTLDs: Essential Insights for Recovering a Local Domain Name

nathalie dreyfus Written by Nathalie Dreyfus18/02/2025

In today’s interconnected digital economy, domain names have become invaluable assets for businesses, serving as critical elements of their online identity and branding efforts. However, cybersquatting, the unauthorized registration of domain names, presents significant obstacles for brand protection. The Uniform Domain-Name Dispute-Resolution Policy (UDRP) offers a mechanism to address such disputes, but its applicability varies, especially concerning country code Top-Level Domains (ccTLDs). This article provides a comprehensive overview of the UDRP’s relationship with ccTLDs and offers actionable advice for reclaiming local domain names.

Understanding the UDRP and Its Application to ccTLDs

The UDRP, established by the Internet Corporation for Assigned Names and Numbers (ICANN), provides a streamlined process for resolving disputes related to the bad-faith registration of domain names. While the UDRP is universally applicable to generic Top-Level Domains (gTLDs) such as .com, .net, and .org, its application to ccTLDs is inconsistent.

Each ccTLD registry operates independently, and the adoption of the UDRP or a variant thereof is at the discretion of the individual registry. For instance, the World Intellectual Property Organization (WIPO) administers dispute resolution services for numerous ccTLDs that have adopted the UDRP or its variants. Businesses must research and understand the rules applicable to their target ccTLD.

Key Considerations for Reclaiming Local Domain Names

  1. Registry Policies: Before initiating a claim, confirm whether the ccTLD registry adheres to the UDRP or an equivalent dispute resolution procedure. This information is often available on the registry’s official website or via WIPO’s online resources.
  2. Eligibility Criteria: To succeed under the UDRP, you must establish the following cumulative conditions:
  • The domain name is identical or confusingly similar to your trademark.
  • The registrant has no legitimate interests in the domain name.
  • The domain was registered and is being used in bad faith.

Trademark rights, even those unregistered in some jurisdictions, play a crucial role in demonstrating your case.

  1. Procedural Variations: Be aware that while some ccTLDs have adopted the UDRP in its entirety, others may have tailored processes with specific submission requirements, timelines, and fees. Familiarize yourself with the specific procedures and requirements of the relevant ccTLD.

Steps to Initiate a Domain Dispute Under the UDRP

  1. Preparation: Gather evidence supporting your claim, including proof of trademark rights, instances of the domain’s bad-faith use, and any correspondence with the registrant.
  2. Filing the Complaint: Submit a formal complaint to an accredited dispute resolution provider, such as WIPO or the Forum. The complaint should detail the basis of the dispute and the relief sought, typically the transfer of the domain name.
  3. Administrative Proceedings: Once the complaint is filed and accepted, the registrant will be notified and given the opportunity to respond. A panel of experts will evaluate submissions from both parties and issue a decision, often within 60 days.
  4. Implementation of Decision: If the decision favors the complainant, the domain name will be transferred after a brief period, provided no court action is initiated by the registrant.

Conclusion

Recovering a ccTLD domain name registered in bad faith requires not only a strong understanding of the UDRP but also the nuances of local registry rules. By diligently preparing your case, navigating registry-specific procedures, and engaging experienced professionals, you can effectively reclaim domain names that align with your trademark rights.

At Dreyfus Law Firm, we specialize in navigating the complexities of domain name disputes across various jurisdictions. Our partnership with a global network of attorneys specializing in Intellectual Property ensures that we provide comprehensive and effective solutions tailored to your needs.

 

FAQ 

What is a country code top-level domain (ccTLD)?

A country code top-level domain (ccTLD) is a two-letter domain extension assigned to a specific country or territory, based on ISO 3166-1 country codes. Examples include .fr for France, .de for Germany, and .uk for the United Kingdom. These domains are generally managed by national organizations and may have specific registration requirements.

What is the EU country code top-level domain?

The ccTLD for the European Union is .eu. It is managed by EURid (European Registry for Internet Domains) and is available to businesses, organizations, and individuals residing in the EU or the European Economic Area (EEA).

What country code top-level domain is France?

France’s ccTLD is .fr. It is administered by AFNIC (Association Française pour le Nommage Internet en Coopération). Registrants must meet certain residency or business presence requirements in France.

Can anyone use country domains?

Not necessarily. The eligibility to register a ccTLD varies by country:

  • Open ccTLDs: Some, like .co (Colombia) and .io (British Indian Ocean Territory), are widely available for international use.
  • Restricted ccTLDs: Others, like .fr (France), .us (United States), and .ca (Canada), require a local presence or a registered business in the respective country.
    Always check the registration policies of the ccTLD before attempting to register.

What is the difference between a TLD and a ccTLD?

A TLD (Top-Level Domain) is the highest level in the domain name system (DNS). TLDs are divided into two categories:

  • gTLDs (Generic Top-Level Domains): These are not country-specific and include .com, .org, .net, .info, and .shop.
  • ccTLDs (Country Code Top-Level Domains): These are assigned to specific countries or territories, such as .fr, .uk, .de, .jp.
    While gTLDs are generally open for global registration, ccTLDs may have specific rules restricting their use to residents or businesses within a country.

Partner with us to safeguard your digital assets across jurisdictions.

The Dreyfus Law Firm is in partnership with a global network of lawyers specializing in Intellectual Property.

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The Challenges of the UDRP Procedure in the Face of the Rise of New gTLDs

nathalie dreyfus Written by Nathalie Dreyfus11/02/2025

The digital landscape has undergone significant transformations with the introduction of new generic Top-Level Domains (gTLDs). This expansion presents both opportunities and challenges, particularly concerning the Uniform Domain-Name Dispute-Resolution Policy (UDRP). As experts in intellectual property law, we aim to elucidate the complexities that brand owners face in navigating the UDRP amidst the proliferation of new gTLDs. This article will provide an overview of the UDRP procedure, discuss the implications of new gTLDs, and explore how brand owners can adapt their strategies to address these challenges.

Understanding the UDRP: A Framework for Resolving Domain Disputes

Definition and Purpose

Established in 1999 by the Internet Corporation for Assigned Names and Numbers (ICANN), the UDRP provides a streamlined mechanism for resolving disputes related to domain names. Its primary objective is to address cases where domain names are registered and used in bad faith, infringing upon trademark rights.

Key Criteria for Filing a Complaint

To initiate a UDRP proceeding, a complainant must demonstrate that:

  • The disputed domain name is identical or confusingly similar to a trademark in which the complainant has rights.
  • The respondent has no rights or legitimate interests in respect of the domain name.
  • The domain name has been registered and is being used in bad faith.

These criteria ensure that the UDRP targets clear cases of abusive domain name registrations.

The Impact of New gTLDs on the Domain Landscape

Expansion of the Domain Name System

In 2012, ICANN launched the New gTLD Program, significantly expanding the number of available gTLDs beyond the traditional ones like <.com>, <.org>, and <.net>. This initiative introduced a plethora of new extensions, such as <.shop>, <.tech>, and <.paris>, aiming to enhance consumer choice and foster competition. For instance, <.shop> has been widely adopted by e-commerce businesses, while <.tech> has gained traction among technology companies.

Opportunities and Risks for Brand Owners

While new gTLDs offer brand owners the chance to secure domain names that align closely with their trademarks and industries, they also pose increased risks of cybersquatting. The vast array of new extensions provides malicious actors with more avenues to register domain names that infringe upon established trademarks.

Challenges Posed by New gTLDs to the UDRP

Increased Potential for Cybersquatting

The surge in gTLDs has led to a corresponding rise in cybersquatting incidents. According to the World Intellectual Property Organization (WIPO), there has been a notable increase in UDRP cases, with a record number of complaints filed in recent years. WIPO reported a 20% increase in UDRP cases filed between 2015 and 2020, demonstrating the growing impact of cybersquatting in the era of new gTLDs.

Complexity in Brand Protection Strategies

Brand owners now face the daunting task of monitoring and protecting their trademarks across a vastly expanded domain landscape. This complexity necessitates more comprehensive surveillance and enforcement strategies to safeguard intellectual property effectively.

Jurisdictional and Procedural Issues

The introduction of numerous gTLDs has also led to jurisdictional challenges, as different registries may have varying policies and procedures. This fragmentation can complicate the enforcement of UDRP decisions and the overall dispute resolution process. For example, the variation in registry policies across jurisdictions, such as Europe and Asia, often creates hurdles for uniform enforcement of UDRP decisions.

Adaptations and Responses

Evolution of the UDRP Framework

In response to the evolving domain landscape, there have been discussions about reforming the UDRP to address new challenges effectively. Proposals include introducing financial penalties for cybersquatters and extending response times for respondents. However, such changes must be balanced against the need to maintain the UDRP’s efficiency and effectiveness.

Introduction of the URS Procedure

To complement the UDRP, ICANN introduced the Uniform Rapid Suspension (URS) system, designed for clear-cut cases of infringement. The URS offers a faster and more cost-effective means of suspending infringing domain names but does not provide for their transfer to the complainant.

Recommendations for Brand Owners

Given the complexities introduced by new gTLDs, brand owners should:

  • Develop a robust domain name strategy that includes registering key trademarks across relevant gTLDs.
  • Implement continuous monitoring to detect and address potential infringements promptly.
  • Utilize mechanisms like the Trademark Clearinghouse to safeguard their rights during the launch of new gTLDs.

Brand owners should also consider employing AI-powered tools to automate the monitoring of domain name registrations across multiple gTLDs.

Conclusion

The proliferation of new gTLDs has undeniably transformed the domain name ecosystem, presenting both opportunities and challenges for brand owners. While the UDRP remains a vital tool for combating cybersquatting, it must evolve to address the nuances introduced by the expanded gTLD space. As the domain name landscape continues to evolve, staying ahead requires not only vigilance but also an adaptable strategy that leverages legal and technological advancements.

At Dreyfus Law Firm, we offer comprehensive services to protect and enforce your domain name rights, including proactive domain name monitoring, strategic enforcement actions, UDRP complaints, and tailored solutions for brand protection in the digital space. Our expertise spans domain name recovery, litigation, and cybersecurity strategies to mitigate the risks posed by online infringement and cybersquatting.

 

For tailored advice on navigating the complexities of domain name protection, subscribe to our newsletter or contact Dreyfus Law Firm for expert guidance.

 

FAQ

How does UDRP work?

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) is an administrative process designed to resolve disputes over domain names that have been registered in bad faith. Complainants must demonstrate that:

  • The disputed domain name is identical or confusingly similar to their trademark.
  • The domain holder has no legitimate rights or interests in the name.
  • The domain name was registered and is being used in bad faith. Decisions under the UDRP are made by dispute resolution providers, such as WIPO, and can result in the transfer or cancellation of the domain.

What are the grounds for a domain name dispute?

A domain name dispute arises when a domain name is alleged to have been registered in bad faith, infringing upon trademark rights. Under the UDRP, the cumulative  grounds for a complaint are:

  • The domain name is identical or confusingly similar to a trademark owned by the complainant.
  • The domain registrant has no legitimate rights or interests in the domain name.
  • The domain name was registered and is being used in bad faith, such as for cybersquatting or phishing.

What is UDRP top-level domains?

UDRP applies to generic Top-Level Domains (gTLDs) such as <.com>, <.org>, <.net>, and to new gTLDs like .shop and .tech, as well as country-code Top-Level Domains (ccTLDs) that have voluntarily adopted the UDRP framework.

What are examples of gTLDs?

Examples of traditional gTLDs include:

  • .com
  • .org
  • .net
  • .info
  • .biz

New gTLDs introduced under the ICANN expansion program include:

  • .shop
  • .tech
  • .law
  • .paris
  • .bank

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Understanding UDRP Jurisprudence: Key Decisions and Practical Insights

nathalie dreyfus Written by Nathalie Dreyfus05/02/2025

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) was established by the Internet Corporation for Assigned Names and Numbers (ICANN) in 1999 to provide a streamlined and cost-effective for resolving disputes related to domain name registrations. This policy effectively addresses challenges such as cybersquatting and trademark infringement in the constant evolving digital landscape. Over the past two decades, UDRP precedent has evolved significantly, setting critical benchmarks that guide current and future domain name dispute resolutions.

Key Cases Shaping UDRP Jurisprudence

Madonna.com: Protecting Celebrity Names

In Ciccone p/k/a Madonna v. Parisi (2000), Madonna filed a complaint against Dan Parisi and challenged the registration of <madonna.com>, which was used to redirect users to inappropriate content. The WIPO panel ruled in favor of Madonna, emphasizing her rights as a globally recognized artist and the protection afforded by her established trademarks. This case underscored UDRP’s role in safeguarding celebrity identities against misuse.

Takeaway: In these types of cases, demonstrating fame and trademark rights, even for personal names, is crucial to success under UDRP.

Panavision.com: Battling Cybersquatting

Panavision Int’l, L.P. v. Toeppen (1999) sets the stage for addressing cybersquatting. The respondent, Dennis Toeppen, registered <panavision.com> to demand payment from the trademark holder. The panel ruled this conduct constituted bad faith, highlighting the UDRP’s utility in combating such exploitative practices.

Takeaway: Registering domains primarily for financial extortion constitutes clear evidence of bad faith.

Sting.com: Navigating Generic Terms

In Sumner p/k/a Sting v. Urvan (2000), the musician Sting failed to secure the domain <sting.com>, as the respondent demonstrated its generic nature and lack of exclusive association with the complainant. The panel noted that UDRP protects trademarks, not dictionary words, unless secondary meaning is proven.

Takeaway: The generic nature of a domain name complicates claims under the UDRP unless clear trademark rights are demonstrated.

Wal-MartSucks.com: Protecting Trademarks from Misuse

This case involved the domain <wal-martsucks.com>, registered by Richard MacLeod. The panel concluded that MacLeod had registered the domain in bad faith, aiming to attract users by creating confusion with the Wal-Mart trademark. The decision emphasized the UDRP’s stance against domains that incorporate trademarks to mislead or criticize without legitimate non-commercial use.

Takeaway: The UDRP consistently upholds the principle that domain names incorporating trademarks cannot be used to mislead, tarnish, or exploit the brand’s reputation under the guise of criticism unless supported by legitimate non-commercial use. This case reinforces the need for complainants to demonstrate how such domains create confusion or harm their brand’s integrity.

Trends and Practical Recommendations for UDRP Practitioners

Rising Caseloads:

WIPO reported over 6,000 cases in 2023, marking a 7% increase from the previous year. This surge reflects the growing challenges faced by brand owners in protecting their trademarks online. Notably, 82% of these cases resulted in the transfer of the disputed domain names to the complainants, demonstrating the effectiveness of the UDRP process in addressing cybersquatting. With the introduction of new gTLDs, vigilance and proactive measures are essential for brand protection.

Critical Elements for Success:

Complainants must establish:

  • The domain name is identical or confusingly similar to their trademark.
  • The respondent has no legitimate interest in the domain.
  • The domain was registered and is being used in bad faith.

Strategic Considerations:

  • Preemptive Registrations: Secure key domains proactively.
  • Evidence Collection: Document respondent behavior indicating bad faith.
  • Supplementary Responses: Address gaps or rebuttals proactively where panels permit.

Practical Examples:

  • com: This case demonstrated the value of early action when the complainant reclaimed her name from misuse in an auction setting.
  • com: Highlighted the necessity of proving bad faith beyond legitimate business use to succeed under the UDRP.

Conclusion: The Role of Expertise in Domain Disputes

The evolution of UDRP jurisprudence over the past two decades has provided a robust, internationally recognized framework for resolving domain name disputes efficiently. Landmark decisions have clarified the policy’s application, balancing the rights of trademark holders with legitimate domain name registrants. As the digital landscape continues to evolve, staying informed about UDRP developments and best practice is crucial for brand owners and legal practitioners alike.

FAQ on UDRP and Domain Name Disputes

  1. What are the three elements of UDRP?
    The UDRP requires the complainant to prove: (1) the domain name is identical or confusingly similar to a trademark in which they have rights, (2) the domain holder has no legitimate interests in the domain, and (3) the domain was registered and is being used in bad faith.
  2. What are the grounds for a domain name dispute?
    A domain name dispute arises when a registered domain is alleged to infringe on another party’s trademark rights. Common grounds include cybersquatting, bad faith registration, and unauthorized commercial use of a trademarked term.
  3. What is the UDRP dispute-resolution policy?
    The UDRP (Uniform Domain-Name Dispute-Resolution Policy) is a procedure established by ICANN for resolving domain name disputes related to trademark infringement. It provides an alternative to litigation, allowing trademark owners to recover domains through arbitration.
  4. What are the three key domains?
    In domain name disputes, the three key domains often refer to: (1) Generic Top-Level Domains (gTLDs) such as .com, .net, and .org, (2) Country Code Top-Level Domains (ccTLDs) like .fr or .uk, and (3) New gTLDs introduced to expand the domain space (e.g., .store, .tech).

 

For comprehensive assistance in navigating domain name disputes and protecting your intellectual property rights, our firm offers expert legal services tailored to your needs. Dreyfus Law Firm is in partnership with a global network of attorneys specializing in Intellectual Property.

The Dreyfus firm collaborates with a global network of intellectual property specialists.

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What is the UDRP? A Comprehensive Guide to Protecting Your Domain Names

Written by Dreyfus27/01/2025

The Uniform Domain-Name Dispute-Resolution Policy (UDRP) serves as a powerful mechanism for resolving disputes over domain names infringing on trademarks. As cybersquatting and domain misuse continue to rise, understanding the UDRP process is essential for safeguarding your intellectual property online. This guide provides an in-depth explanation of the UDRP, breaking down its process, its applications, and actionable insights for businesses to protect their domain names effectively.

Understanding the UDRP: An Overview

The UDRP was established by the Internet Corporation for Assigned Names and Numbers (ICANN) in 1999 as a global framework for resolving domain name disputes. This policy is applicable to all generic top-level domains (gTLDs) and some country-code top-level domains (ccTLDs) that have adopted the UDRP.

At its core, the UDRP is designed to address bad-faith registrations of domain names, often referred to as cybersquatting. By offering a streamlined alternative to lengthy court procedures, the UDRP enables trademark owners to reclaim domain names infringing their rights efficiently and cost-effectively.

When to Use the UDRP

The UDRP process applies in situations where the following cumulative conditions are fulfilled:

  1. Identical or Confusingly Similar Domain Names: The disputed domain name is identical to or confusingly similar to a trademark in which the complainant has rights.
  2. No Legitimate Interest: The registrant has no legitimate interests or rights in the domain name.
  3. Bad Faith Registration and Use: The domain name was registered and is being used in bad faith, such as for profit through resale, misleading consumers, or tarnishing the complainant’s trademark.

Examples of bad faith include registering domains to sell them at inflated prices to trademark owners, redirecting traffic to competitors, or hosting malicious content.

Steps in the UDRP Process

Filing a Complaint

The first step is to file a complaint with an ICANN-approved dispute resolution provider, such as the World Intellectual Property Organization (WIPO). The complaint must:

  • Clearly identify the disputed domain name.
  • Establish trademark rights.
  • Provide evidence of bad faith registration and use.
  • Demonstrate that the registrant has no legitimate interest in the domain.

The complainant must pay the applicable filing fee and submit the necessary documentation.

Responding to the Complaint

Once the complaint is filed, the domain registrant (respondent) is notified and given 20 days to respond. The respondent can:

  • Present evidence of legitimate use.
  • Argue that the domain name was not registered or used in bad faith.
  • Provide proof of rights or interests in the domain.

Failure to respond typically results in a decision in favor of the complainant.

Panel Decision

The case is reviewed by a panel of one or three arbitrators, depending on the parties’ preference. The panel evaluates the evidence and makes a decision within 14 days of receiving all submissions. Possible outcomes include:

  • Transfer of the domain name: The domain name is transferred to the complainant.
  • Cancellation of the domain name: The domain name is removed from registration.
  • Denial of the complaint: The registrant retains the domain name.

Key Benefits and Limitations of the UDRP

Benefits

  • Cost-Effective: UDRP proceedings are significantly cheaper than litigation.
  • Fast Resolution: Cases are typically resolved within 60 days.
  • Global Scope: Applicable to most gTLDs and many ccTLDs.

Limitations

  • No Financial Compensation: The UDRP only addresses domain ownership, not financial compensation.
  • Limited Remedies: Decisions are limited to transfer, cancellation, or retention of the domain.

How to Strengthen Your Position in a UDRP Case

  • Document Trademark Rights: Ensure your trademarks are properly registered and actively used.
  • Monitor Domain Names: Regularly monitor domain name registrations to identify potential infringements early.
  • Gather Evidence: Collect screenshots, emails, and other evidence showing bad faith use.
  • Seek Expert Guidance: Work with legal professionals experienced in UDRP cases to build a strong complaint or defense.

Conclusion: Protect Your Brand with Confidence

The UDRP is a critical tool for businesses and trademark owners to combat cybersquatting and protect their digital assets. By understanding the process and taking proactive steps, you can safeguard your brand’s online presence effectively.

At Dreyfus Law Firm, we specialize in intellectual property protection, including UDRP proceedings. With a global network of IP specialists, we are equipped to guide you through the complexities of domain name disputes and ensure your brand remains secure.

Contact us today to discuss your UDRP case and discover how we can assist in protecting your online identity.

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Legal Watch : A public figure’s name constitutes a right that can be the basis for UDRP proceedings

Written by Dreyfus23/12/2022

Less than a month after the 2022 presidential elections, a WIPO Arbitration and Mediation Center’s Expert rendered a decision regarding a domain name reproducing the name of the re-elected candidate Emmanuel Macron.

 

The domain name in dispute, <emmanuel-macron.com>, had been registered on the 3rd October 2015, during the time when Emmanuel Macron was still the Minister of Economy, Industry, and Digital Technology. Far from merely imitating the future president’s name, this litigious domain name would redirect to this website, which in fact, was the official website of the adverse polemist candidate during the 2022 presidential election. In this respect, we note that the domain name did not redirect to content related to Mr. Eric Zemmour before 2022 (according to an Archive.org search).

 

 

 

 

 

The complainant logically argues in their complaint that they must fulfill the requirements of paragraph 4(a) of the Policy, where it is specified that there are three cumulative elements necessary to claim the transfer of the disputed domain name.  These are :

 

♦ The similarity of the domain with a right of the complainant.

  • ♦ The lack of right or legitimate interest in the domain name on the respondent’s part.
  • ♦ The proof of bad faith registration and use by the registrant.

 

The interest of this case stands within two main points : the assessment of the similarity between the disputed domain name and the complainant’s prior rights, and the characterization of the registrant’s legitimate interest.

 

The complainant presents his arguments based on the existence of non-registered rights to the trademark “EMMANUEL MACRON”, a concept no longer existing under French law (except for well-known trademarks). If, by the simple fact that a domain name contains a family name that is not sufficient enough to justify an interest in bringing an action, it is important to note that under the Policy, the Experts’ assessment varies depending on the use of the family name made by the complainant. Here, the domain name was reproducing both the first name and the family name of Mr. Macron.

 

The Expert considers that when a person’s name is used as a trademark-like identifier in commerce, a complainant may be able to establish unregistered rights from that name to succeed in the UDRP proceedings. In this case, the Expert explains and outlines that the complainant’s use of the name “Emmanuel Macron” is not limited to his political activities but also extends to a commercial use being in this case, the publication and sale of books. Therefore, from the commercial use of his name, the complainant satisfies the requirements of the Expert. The Expert in retrospect acknowledges him as holding a non-registered trademark right. Therefore, the identity of the signs in comparison is established.

 

As trademark specialists, we would have appreciated a more puristic demonstration. In France, trademark rights cannot be acquired through simple use without registration (except for well known trademarks). In this case, it was up to the complainant to demonstrate that he had acquired trademark rights under Common Law or that the name “EMMANUEL MACRON” was a well-known trademark for certain goods and/or services.

 

We assume that the case was urgent and that the Expert wanted to do the right thing in this unacceptable situation. The complainant was fortunate that the case was assigned to an Expert who wanted to achieve a fair decision at the expense of trademark laws.

 

The Expert then raises the question of legitimate non-commercial or fair use of the domain name, according to paragraph 4(c)(iii) of the Policy.

In this case, the disputed domain name, redirects to the website of another opposing political figure. Therefore, the use of this domain name does not seem commercial and therefore, could more likely fall into the scope being freedom of speech.

 

However, previous experts have ruled that the right to legitimate criticism does not necessarily extend to the registration or use of a domain name which is identical to a trademark or a right, when it could create a risk of confusion through impersonation. Therefore, the use of the name EMMANUEL MACRON to redirect to his opponent’s website, Eric Zemmour, would incur a risk of implicit affiliation with the complainant.  This would also constitute, on the part of the respondent, an attempt to misleadingly divert Internet users, especially since the respondent cannot claim to be known or be recognized under the name “EMMANUEL MACRON”.

 

As a result, and according to paragraph 4 (c) (iii) of the Policy, the Expert has determined and decided that it cannot therefore, be considered as a legitimate non-commercial or fair use status. In conclusion, the registration and use in bad faith were also acknowledged for the same reasons. As the domain name was registered at the end of 2015, the panel observed that the complainant had already acquired significant notoriety as a public figure in France. Moreover, the redirection to the website of a political opponent was likely to mislead Internet users and disrupt the complainant’s activities.

 

In retrospect, this case could have been subject to much harsher and serious consequences, as the intent seemed to take the form of manipulating an electorate in the run up to the presidential election, rather than taking advantage for commercial purposes.

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Legal Watch: UDRP Proceedings: Legitimate Interest of the Respondent

Written by Dreyfus03/06/2022

The legitimate interest of the respondent justified by the use of his trademark in connection with the services for which it is registered.

 

A respondent’s legitimate interest in UDRP proceedings is likely to be acknowledged when its registered domain names reproduce its trademark and said trademark is used for the services it covers, even though the trademark was registered subsequently to the domain name registrations. It is therefore essential for the complainant to prove in great detail that the defendant has sought to infringe its IP rights.

On 27 September 2021, Easy Online Solutions filed a UDRP complaint seeking the transfer of the domain names <cloud-mojo.com>, <cloudmojo.tech>, <cloudmojotech.com> and <cloudmojotech.website>, which were registered on varying dates between 8 May 2020 and 12 February 2021 by Cloudmojo Tech LLP.

 

 

The applicant is a US-based company specializing in the provision of web hosting, content distribution and other “software as a service (SaaS)” services. It owns four word trademarks registered in the United States between the years of 2012 and 2019 for services in class 42 relating to the signs ‘MOJOHOST’, ‘THAT’S GOOD MOJO’, ‘MOJOCDN’ and ‘MOJOCLOUD’. In addition, it has been using the domain name <mojohost.com> since 2002, and has also reserved the domain name <mojocloud.com> which redirects to the website www.mojohost.com.

Cloudmojo Tech LLP, established in June 2020 in Mumbai, India, specializes in the resale and distribution of Microsoft products and has reserved the disputed domain names in the course of its business. Furthermore, prior to the start of the proceedings in June 2022, the defendant filed the word trademark “CLOUDMOJO TECH” in India for services in Class 42, and notably for “computer programming”, “technology consulting” and “SaaS services”. Said trademark was registered on 9 December 2021.

The Panel acknowledges that there is a likelihood of confusion between the disputed domain names and the trademark “MOJOCLOUD” insofar as they consist of the same verbal elements, “MOJO” and “CLOUD”, although the terms are reversed.

In terms of the respondent’s rights or his legitimate interest, the Panel raised several points.

Firstly, the respondent is active in the IT industry, although on a relatively average scale.

Secondly, the domain names are very similar to the respondent’s corporate name. However, the respondent assumed the name only after the first three domain name registrations, i.e. a few weeks later.

The respondent argues that he was not aware of the complainant’s company, nor of its trademarks, at the time of the reservation of the disputed domain names (or at least of the first three domain names).

In fact, it must be noted that the term “cloud” is rather descriptive of the services concerned. In addition, although the term “mojo” is not descriptive of the services concerned, it is still a generic term. Thus, it is plausible that the respondent chose the term “mojo” without having been aware of the complainant’s trademarks.

This hypothesis is supported by the fact that the applicant’s marks do not seem to be known throughout the world. The Panel notes that the applicant has servers in the USA and the Netherlands. He has also been using the trademark “MOJOHOST” in the United States for numerous years. “MojoCloud” is the name used for a service offered on its website www.mojohost.com. Therefore, the claim that its trademarks have a substantial international reputation is not proven. The claimant provides no evidence of sales revenue, advertising expenditure, or of the volume of traffic generated by the www.mojohost.com website and by the redirection of www.mojocloud.com to www.mojohost.com.

In addition, the respondent has registered the trademark ‘CLOUDMOJO TECH’ in India, which is used for the relevant services. The applicant was aware of this registration application . However, no action was taken to oppose it. From this inaction it can be inferred that the applicant has no business in India. The Panel notes that although the applicant’s website is accessible from India, it has not demonstrated any activity in that territory.

In view of these elements, the complaint is rejected.

The decision is not surprising in that it is customary for a company to reflect its corporate name in a domain name, especially since the use of the respondent’s trademark is correlated with the services for which it is registered.

As such, it was essential for the complainant to prove the use of its marks in India but also to provide further evidence of its alleged international reputation. In view of the defendant’s corporate name, which was only revealed after the complaint was filed, a strong India-centered case was essential to have a chance of obtaining the transfer of the names.

 

(WIPO, Arbitration and Mediation Center, Case No. D2021-3197, 3 January 2022, Easy Online Solutions, Ltd. d/b/a MojoHost v. Ahmed Parvez Banatwala, Cloudmojo Tech LLP, and Ahmed Parvez Banatwala, Construma Consultancy Pvt. Ltd)

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Legal Watch : THE UDRP PROCEDURE

Written by Dreyfus22/03/2022

CYBERSQUATTINGThe UDRP PROCEDURE is designed to deal with cases of abusive cybersquatting.

Since the implementation of the General Data Protection Regulation and, more generally, when domain names are registered anonymously, it is often difficult to identify the enemy that we intend to strike.

The issue can be solved through filing a UDRP complaint. This is what happened to the US company Capital Distribution Consulting Inc. As the owner of the semi-figurative trademark Royal dragon superior vodka 5X distilled, the company filed a complaint against the anonymously registered domain name <royaldragonvodka.com>.

Once the procedure was initiated, the identity of the registrant was revealed. The latter was a certain Mr. X, who was an officer of Horizons Group (London) in the United Kingdom and the owner of the UK trademark Royal dragon vodka.

 

 

In fact, it turned out that both parties obtained their trademarks through a transfer carried out by Dragon Spirits Limited in Hong Kong, of which Mr. Bharwani was one of the shareholders.
This information gave rise to further exchanges between the parties, each accusing the other of having obtained the trademark unlawfully. In particular, the complainant argued that the transfer to the defendant had taken place after the liquidation of the transferee.

The facts reported in this decision are particularly complex and all-encompassing, which indicates that the UDRP is not the appropriate forum for this kind of litigation.
The expert reported that the complainant filed an additional response, which is not provided for in the Regulation, after the defendant’s response and then a second response 9 days later. This response contained 15 annexes, including a sales agreement, court orders, share transfers, a declaration relating to the liquidation procedure, etc.

The expert decided not to accept this response and consequently not to consider the defendant’s request to reply in case these submissions were accepted.
The expert pointed out that this case does not concern a simple case of cybersquatting but rather a competition matter, involving trademarks being registered around the world.

He noted that trademark rectification proceedings based on competition grounds have been granted or are still pending in different jurisdictions. Therefore, the domain name in question is fully in line with this broader dispute. The expert recalled that the Guiding Principles of the UDRP are not designed to settle all kinds of disputes that would have any link with domain names. On the contrary, the Guidelines establish an inexpensive and streamlined administrative procedure being limited to ‘abusive cybersquatting’ cases.
This decision serves as a reminder that it is essential to obtain as much information as possible about the disputed domain name that forms the subject of a procedure. For relatively old names such as <royaldragonvodka.com> being registered in 2011, valuable information can be found through consulting the Whois history of the domain name.

 

 

WIPO, Arbitration and Mediation Center, Case No. D2021-2871, Nov. 24, 2021, Capital Distribution Holding Inc. v. Hiro Bharwani, Horizons Group (London) Ltd.

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LEGAL WATCH : THE NAME PARISTECH.ORG

Written by Dreyfus18/03/2022

The name < PARISTECH.ORG >, operated by Parisian entrepreneurs, would not infringe Paritech’s rights.

At the end of the year 2021, a surprising UDRP decision was issued. It concerned a complaint filed against the domain name < paristech.org > that was registered by an anonymous registrant in 2017. The complaint was filed by the French ParisTech Foundation («ParisTech») who is known for its higher education services primarily in the fields of science and technology,

ParisTech notably owns two French Paristech trademarks, registered in 1999 and 2010 and subsequently renewed, as well as the international trademark “Paris Institute of science and technology Paristech” registered in 2010 and renewed in 2020. It also owns the <paristech.fr> domain name, registered in 2004.
The disputed domain name was used to disseminate French articles on a variety of topics, most of which related to technology and innovation. Before filing a complaint, the complainant attempted to contact the registrant at the address mentioned on its website, but without success.

 

After the complaint had been filed, the defendant indicated that he was open to find an amicable agreement with the complainant. Although it led to the suspension of the proceedings, the negotiations – whereof the content has not been reported – were not successful. Consequently, the proceedings resumed. The defendant submitted a late response to the complaint, which the expert decided not to accept, based on the consideration that it would not have changed the outcome of the case anyway.
In his analysis, the expert acknowledges that the domain name is identical to the complainant’s prior Paristech trademarks.

However, as far as the legitimate interest is concerned, his position may seem unexpected since he decided not to rule on the matter.

He noted that the website included articles on various topics that mostly related to technology and innovation. The site incorporates a «Paris Tech» logo at the top of the page and at the bottom, a reference to the city of Paris and a postal code.

He noted that the «Paristech» website is managed by two Parisian entrepreneurs who want to keep track of technological developments.

The only method of contact is an email address. Nonetheless, the complainant demonstrated that this email address does not work.

The expert further noted that the legal notices only contained the contact details of the OVH host and that the contact details did not correspond to those provided by the registration office.
However, he noted that there is no evidence to suggest that the purpose of the defendant was to target the complainant’s trademark. The “Paris Tech” logo on the site is different from that of the complainant. In addition, the expert stated that the content presented on <paristech.org> and <paristech.fr> are different.

He explained that «Paristech» can easily be understood as “Paris Technology” referring to the content of the site.

Based on these facts, the expert considered that the complainant failed to prove the defendant’s bad faith and referred to his comments on this point.

He considered that the defendant could have known about the Paristech trademark when he registered the domain name since the complainant’s trademark appears to be known in France in connection with its research education services and that the website is operated by Parisian entrepreneurs, where the complainant is based.

Nevertheless, he noted that the site was non-commercial, relating to technology and innovation, and did not refer to the complainant’s field of activity, namely education.

Moreover, the expert noted that the complainant did not provide proof that the registrant had proposed the domain name for sale before the start of the proceedings, nor that he would have obtained a financial gain by making use of this domain name through taking advantage of the risk of confusion. Hence, the domain name registration does not constitute an abusive reproduction of third-party trademarks.

He therefore rejected the complaint, stating that the choice to hide his contact information on the Whois file and to provide on his website a contact email address that does not work is not sufficient to conclude bad faith registration.
This decision may seem surprising given the complainant’s reputation among the French speaking and international public.

The domain name is strictly identical to the earlier trademark and reproduces part of the complainant’s legal name. The website is operated in French. However, the complainant is located in France where it enjoys a certain reputation.

The legitimacy of the site may seem questionable since no legal notice is inserted and the contact address is false. The defendant does not claim trademark rights or a legal name «Paristech».
The website’s topics are similar to those covered by ParisTech. The fact of not drawing active income or not actively proposing the sale of the domain name does not mean that the defendant did not intend to target the complainant’s trademark. We note that as of December 30, 2021, the site is inactive.

By consulting the history of the Whois of the disputed domain name, we can see that on February 12, 2017, the name was held by Mr. X, ParisTech company. According to our research, the latter was the general manager of ParisTech. Subsequently, the name became anonymous. Therefore, there appears to be a very clear link between the complainant and this domain name.

Finally, although the articles promoted on the site do not focus on education, it could be argued that the dissemination of informative articles can be related to it.

It appears that the expert based his decision primarily on the lack of commercial intent in the use of the disputed domain name.

However, the expert noted that if the content of the website were to change in order to infringe the complainant’ rights, then the complainant would be free to pursue legal action.

 

WIPO, Arbitration and Mediation Center, Case No. D2021-2417, October 28, 2021, Paristech Foundation v. Domain Administrator d/b/a privacy.cloudns.net

 

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