De Beers claims victory in domain name piracy dispute

18 Jan 2017 , 11:06am

Luxury jeweller De Beers has defeated an individual who registered the domain name, one of the new Global Top Level Domain name registries (gTLD).

The site was designed to be a non-commercial forum for consumers, initially suggesting De Beers had a weak case. However, there were a number of negative comments about the De Beers brand which were suspiciously added only after the De Beers’ lawyers contacted the registrant. De Beers argued that this removed any good faith or fair use defence available to the registrant.

The WIPO (World Intellectual Property Organisation) Administrative Panel agreed and held that the three requirements for a successful complaint under the UDRP (Uniform Dispute Resolution Policy) were met and so that the domain name should be transferred back to De Beers. WIPO’s reasoning was that (a) was identical/confusingly similar to a trade market in which De Beers had rights, (b) the domain owner had not rights/legitimate interests in respect of and (c) had been registered and used in bad faith.

Good news for brands

This is good news for brand owners who want digital protection for their brand to maintain its exclusivity. Since the new gTLD launch, 1179 new gTLDs have been approved (e.g. fashion, .store and .shopping) considerably increasing the number of potential domain name applications for a brand owner’s brand. Phil Sherrell, partner at Bird & Bird, said: 'This is an important victory for brand owners in the battle to keep control over the ever-expanding number of available domain names.' There have been serious concerns that sites are being created so that derogatory remarks can be made about brands and their reputation (e.g. with domain names such as .sucks and .xxx). The decision is good as it means that domains that use a brand in bad faith will be transferred to the trade mark owner even under the new gTLD registries, trumping arguments of free speech.

Reaction from De Beers

Melinda Willis (Legal Advisor, Anglo American plc speaking on behalf of the De Beers Group of Companies) said 'De Beers is very pleased with the outcome of this first decision in relation to a .feedback gTLD registration. As a leader in the luxury sector, De Beers has made huge investments over a number of generations to grow the value of its brands. As any misuse of our IP could seriously undermine our brand equity, De Beers takes the protection of its IP very seriously. This includes adapting our brand protection and enforcement strategies to the ever-changing online world including, in this case, the new gTLD regime.'