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Domain name cybersquatting – a serious issue

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Domain names form an essential part of the branding strategy for any business. Many businesses will incorporate their trade mark into their domain name, together with a generic top level domain (such as .com .net .org .mobi) and/or a country code top level domain (such as .au .uk .nz).

However, if an unrelated third party uses sharp business practice and registers a domain name incorporating the trade mark (or variation) before the trade mark owner – otherwise known as cybersquatting – this can have a detrimental flow-on effect to the business concerned. In addition, it is onerous and expensive for a trade mark owner to protect its branding by registering all possible permutations and combinations of a domain name incorporating its trade mark.

WIPO administers the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP is a quick and cost-effective process to resolve domain name disputes outside of the traditional court structure, and is designed specifically to discourage and resolve the abusive registration of trade marks as domain names by cybersquatters. During 2008, WIPO received 2,329 complaints under the UDRP, representing an increase of 8% over 2007 figures. The top business sectors for cybersquatting activity were biotechnology and pharmaceuticals, banking and finance, Internet and IT, retail, food, beverages and restaurants. Click here to view the WIPO Report on the Record number of Cybersquatting Cases in 2008.

With the expected release of new top level domains into the domain name system in late 2009, the level of cybersquatting complaints and potential for confusion in the marketplace is set to increase. The WIPO Director General has expressed concern that this expansion “will provide abundant opportunities for cybersquatters to seize old ground in new domains”.

There are steps you can take now to assist in resolving the cybersquatting activities of third parties. These include:

  • applying for registration of your trade mark with IP Australia;
  • registering your domain name across a variety of top level domains;
  • monitoring the internet for domain names incorporating your trade mark (or common variations of your trade mark);
  • bringing domain name dispute resolution proceedings in accordance with the rules of the UDRP;
  • in Australia, initiating court proceedings against the cybersquatter for misleading and deceptive conduct, trade mark infringement and/or passing off.

Mason Sier Turnbull is able to assist you with domain name strategies to prevent and defend your exposure to cybersquatters.

Author: Noelene Treloar