Like never before, digital channels and offshore server hosting breeds the potential for the abuse of reputable brands.
Cybersquatting involves the bad faith registration of domain names by third parties. Cyber-squatters exploit the first-come, first-served domain name registries, a common motive being to sell the domain name back to the brand owner or to attract web traffic to unrelated commercial offers.
With the expanding international scope of business today, business owners need to be vigilant of how protected brands both nationally and internationally.
What iCann Do?
The Internet Corporation for Assigned Names and Numbers (iCann) is responsible for managing and coordinating the Domain Name System (DNS).
iCann is also responsible for accrediting the domain name registrars primarily for its generic top level domains such as .com, .net, .org and .biz.
Cybersquatting falls within iCann’s domain and is capable of being resolved via its expedited arbitration panel operated in terms of the World Intellectual Property Organisation (WIPO)’s Uniform Domain-Name Dispute-Resolution Policy (UDRP). In so doing and in regard to the domain name, a complainant must show: –
- A pre-existing right;
- It is identical or confusingly similar;
- It was registered in bad faith and/or the respondent has rights or legitimate interests therein.
The iCann process is faster and less expensive than litigation and if the complainant wins, the registries are obliged to transfer or cancel the domain name.
A Notable example includes Julia Roberts who tried to reclaim her name against Russell Boyd a notorious cybersquatter, who had usurped the domain name ‘juliaroberts.com’. The panel found all three above mentioned elements, conclusively satisfied and hence ordered that the registry transfer the domain name to Roberts.
Trademarks are considered territorial, meaning that protection is confined to the jurisdiction of the country in which they are registered. It is therefore sage to register the trademark globally via WIPO’s Madrid Protocol and in this regard refer to our page on intellectual property and trademarks.
The Madrid Protocol in addition allows its members to utilize the WIPO Arbitration and Mediation Centre (AMC) in cases of cybersquatting, which has processed over 41,000 cases, none more prominent than that of Madonna who was awarded control of madonna.com from a notorious cybersquatter.
WIPO has also been successful in protecting famous sporting brands like the “UEFA Champions League” and the “FIFA World ”.
For more information on trademarks as well as the importance of trademark registrations, see our blog ‘What’s in a name?‘.