Domain names are invaluable digital assets in todays world. Over the last few months, dotNice have been following the epic saga between Lucasfilm (now owned by Disney) and an established online retailer of fancy dress attire, Abscissa. The story begins over a decade ago when Abscissa registered various domain names including to attract online consumers searching for star wars paraphernalia and product goods to it’s webpage. Over the course of ten years, the online retailer used the domain to sell Star Wars related fancy dress attire. The common term given to such behaviour is domain-squatting or cyber-squatting which describes the act of registering or trafficking in a web address with bad faith intent to profit from another party’s trademark. Over the course of July this year, Lucasfilm (Disney) litigators pursued Abscissa to enforce their IP rights and were successful in their endeavours. Following the ruling of Nominet (the UK’s domain name registry) six different domain names, originally registered by the third party, were recovered by Disney and added to their existing portfolio of digital assets. Domain disputes like the debacle are in no way a recent phenomenon.

Following countless cases of online ip infringement, WIPO (World Intellectual Property Organisation) established an arbitration system in 1999 allowing trademark owners to file cases against alleged cybersquatters and thus, enforce their IP rights online.

So what actually constitutes domain infringement?

Although a domain name can easily be registered at a relatively minimal cost today, the terms of what constitutes infringement or intellectual property violation can be a little more complicated.
In order to successfully recover a domain name from a third party, the following conditions must clearly proven:

1. the complainant must have a trademark registered (related to the domain in question).

2. the defendant’s registration must be deemed as ‘abusive’ of the complainants rights or infringe on it’s proven intellectual property. In other words, it must be proven that the defendant registered the domain in bad faith for the purpose of leveraging another trademark owners brand equity.

What can brands do to prevent such cases of cyber-squatting?

– ensure you have your marks registered in all countries you operate in internationally

– Invest in building your domain name portfolio to avoid opportunistic domain squatters registering domains similar to your brand

– monitor keywords related to your brand and domain names to ensure you are aware of any dubious domain registrations

– Take swift action once infringement or ip violation has been identified.

Disney’s determined enforcement of their intellectual property rights should be emulated by all brands with an online presence. Failing to establish an effect digital brand protection strategy will ultimately negatively impact on a businesses bottom line.

dotNice – experts in digital brand protection
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