Cybersquatting: The new black within systematic trademark infringement?

 In Anticybersquatting Consumer Protection Act, Cybersquatted domain, Cybersquatting, Domain name infringement, Domain names, Infringement, Intellectual Property, UDRP

When a domain name that is identical or confusingly similar to a trademark has been registered in bad faith, for example with the intention to deceive customers or sell it to the trademark owner at a higher price, it is called cybersquatting. Cybersquatting has become a common and growing issue with perpetrators not only targeting digital companies but also analog, which might not even notice they are exposed.

Ritzio International is a land based gaming operator with over 200 venues in Europe, where it’s operating under its key brand Volcano.

In a complaint filed with the WIPO Arbitration and Mediation Center in July this year, Ritzio accused multiple respondents of infringement regarding 117 domain names relatable to Volcano and other similar trademarks held by the company. The domains were registered between 2011 and 2017 and linked to fully functioning gambling websites designed to look like they were Ritzio’s own.

The Panelist Nick J. Gardner, appointed by the Center, found that all the disputed domain names except for one, had been registered and used in bad faith. The 116 domain names were considered confusingly similar to Ritzio’s trademarks and the Panel ordered for them to be transferred to Ritzio.

By addressing the matter supported by a solid trademark protection, Ritzio managed to gain possession of the domain names without paying for them.  Why the company did not act sooner however, is an interesting question. The fact that it took Ritzio up to 6 years to get the domains transferred has likely damaged the Volcano brand. It has also enabled third party actors to monetize on the brand’s goodwill without authorization. A situation like this can be easily avoided at an early stage by having a proactive approach to domain portfolio management, instead of acting reactively when the damage is already done.

This case shows how closely related trademarks and domain names are when it comes to defending intellectual properties, both in physical and digital form. We at Otmore are experts in this field and can assist your company, digital or not, to create a proactive strategy to protect your assets.

You can find information about our different watch services here, or contact us directly – we are happy to answer any questions you might have.

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