De Beers has succeeded in its complaint against the registrant of the domain name debeers.feedback. The decision is significant as it is the first decision in relation to a .feedback gTLD registration and is good news for brand owners – contrary to the initial views of the registry owners at launch, they can successfully challenge such registrations.
Certain of the new gTLDs released recently have caused serious concerns to brand owners, because of the risk of prominent sites being created in order to attack or tarnish their brand (including .sucks, .xxx and so on). New gTLDs such as .feedback and .review raise more nuanced issues of free speech, but it is now clear that arguments to that effect are not the complete trump card which registry owners hoped they would be. Brand owners should be encouraged to stand up to attempts to hijack their marks, particularly where the facts show that the site in question is being used in bad faith.
In the debeers.feedback decision, the WIPO Administrative Panel held that the three requirements for a successful complaint under the UDRP (Uniform Dispute Resolution Policy) were all met, namely that:
- the disputed domain name was identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
- the Respondent had no rights or legitimate interests in respect of the disputed domain name; and
- the disputed domain name had been registered and was being used in bad faith.
The Panel therefore ordered that the disputed domain name debeers.feedback be transferred back to the Complainant, 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 .”
Read the entire decision here