New gTLDs provide brand owners with alternatives to traditional domain suffixes such as .com and .net. However, as is often the case, with new opportunities come new problems….
De Beers, the diamond company, brought a domain name recovery action (UDRP) against the Registrant of debeers.feedback (“the Domain”). The Domain resolved to the website www.debeers.feedback, which contained a number of negative reviews about the De Beers brand.
On the face of it, DeBeers had a weak case because .feedback was designed to provide a non-commercial forum for consumers. However, it appeared that a number of the reviews had only been added after De Beers’ lawyers wrote to the Registrant. De Beers argued that this removed any good faith or fair use defence available to the Registrant. The Panel agreed and transferred the Domain to DeBeers.
This decision highlights the online challenges faced by brand owners, as well as the inherent limitations of UDRP complaints, which favour freedom of speech in the absence of evidence to the contrary. Here, the Registrant’s ulterior commercial motives removed any realistic prospects of reliance upon a free speech defence. However, this decision is very fact-specific and brand owners faced with questionable third party use should consider recourse beyond the traditional UDRP route e.g. a passing off action against the domain name registration or a claim for trade mark infringement.
Stobbs has considerable experience of online enforcement, including UDRP proceedings and alternative legal action. If you would like to discuss your brand protection in the online environment, feel free to get in touch.