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Domain name victory for sports brand Volcom

18-07-2017

What can you do if a third party seeks to profit from your brand by registering a domain name that incorporates part or all of your brand name? Domain name dispute procedures, such as the Uniform Domain Name Dispute Resolution Policy (UDRP), exist to enable trademark holders to challenge such registrations. They can provide a fast and relatively inexpensive route to resolution, as sports brand Volcom found in its recent domain name disputes.

As the number of top-level domains continues to expand, it’s becoming more challenging for brand owners to manage their growing domain name portfolios, as well as to monitor for infringing use of their brands and trademarks online. It’s no longer a viable business strategy to register domain names for every gTLD in existence, whether commercially or defensively – there are simply too many. Yet, by not registering those domain names, they are opening the door to potential infringement, brand dilution and loss of revenue.

Finding resolution
Fortunately, domain name resolution procedures, such as the UDRP, exist to provide brand owners with a cost-effective means of resolution where infringement occurs. To benefit from those procedures, however, the appropriate trademark rights need to be in place. There must also be legal grounds to claim ownership of that domain name. Domain name registries operate on a first-come, first-served basis, and it is entirely possible that a company with a similar name or brand name (but registered in a different class of goods or services) simply got there first.

Should legal grounds exist, however, the resolution procedure of choice will depend on the top-level domain. For .com, .info, .net and .org (among others), ICANN’s UDRP is the applicable route. In order to bring a complaint via this channel, the following requirements must be met:

  • The domain name is identical or confusingly similar to the trademark of the trademark holder;
  • The domain name holder has no rights of its own on or legitimate interest in the domain name; and;  
  • The domain name is registered and used in bad faith.

Infringement close to home
For disputes involving registration of a domain name by a dealer/reseller, distributor or service provider of a trademark (holder), the OKI DATA decision of 2001 of the WIPO Arbitration and Mediation Center (WIPO AM Center) applies. That decision found that a trademark used in a domain name could be considered bona fide when:

  • The website concerned actually sells products bearing the trademark of the trademark holder;
  • No products of competitors are offered on the particular site, in other words: the trademark is not misused as bait to offer competitive products;
  • The website accurately indicates the relationship with the trademark holder;
  • The domain name holder has not registered all domain names that are relevant to the trademark holder thus denying the trademark holder the opportunity to register relevant domain names.

An overarching principle of the OKI DATA decision is that the use of a domain name is potentially actionable if a link is suggested between the website using the domain name and the trademark/ trademark holder.

The Volcom disputes
A good example of how the OKI DATA criteria is applied can be found in the recent decisions over the volcomsuomi.com and volcomnorge.com domain names. Those domain names were registered by two dealers/resellers of the Volcom brand. Suomi is a geographical term for Finland; and Norge is the Norwegian name of Norway.

The holder of the trademark VOLCOM has held various trademarks registrations, mostly for clothing (class 25), since 1990, in both the US and the European Union, including the word mark VOLCOM and the following figurative mark: 

The domain name holders of volcomsuomi.com and volcomnorge.com used the following logos on their websites on which Volcom products were offered for sale: 

In the (almost identical) decisions of 3 July 2017 (see here and here), the WIPO AM Center found: both domain name registrations to be confusingly similar with the Volcom trademarks; that the registrations did not have a right or legitimate interest in the domain names; and, that the domain names had been registered and were being used in bad faith. Volcom’s complaints were thus granted, leading to the cancellation of both domain names.

The OKI DATA criteria were carefully reviewed in both decisions and it is important to note that the websites in question were found, under those criteria, to give the false impression that there was a link between the websites and the trademark holder, underlined by the prominent display of the Volcom trademarks.

A strategy for domain names
For further advice on domain name management or dispute procedures, contact us or read our article: ‘A strategy for domain names’.

Frouke Hekker works in Novagraaf’s Competence Centre. She is based in Amsterdam.