Monday, June 2, 2008

Cybersquatting case serves as reminder of importance of monitoring domain expirations

One of a number of Golden Door Spa locations

In a throwback to the early days of UDRP decisions, the Panel in Golden Door Licensor, L.L.C. v. Protected, WhoisGuard/Chen Bao Shui, WIPO Case No. D2008-0352 (Arne Ringnes, May 13, 2008) required the transfer of to the owner of the GOLDEN DOOR SPA trademark. In most ways, the case was typical-- the domain name was being used in connection with sponsored links to the Complainant's competitors, the Respondent was a serial cybersquatter that had lost a number of UDRP decisions before WIPO, and the Respondent entered no appearance to defend himself. The decision to transfer was about as easy as they come.

But what was not so typical, at least anymore, was the fact that the domain name at issue was identical (except for ".com") to the Complainant's well-known trademark. In the early years of the UDRP, say around 2001-2002, most WIPO decisions involved what I call "traditional" cybersquatting, where the Respondent registered as a domain name the exact trademark of a third party, with the only difference being the ".com" or some other top level domain. After a few years, most diligent trademark owners recovered their trademark-identical domain names from WIPO, NAF, the courts, through a purchase, or as a result of a negotiation or threat of some sort.

With trademark identical domain names in the hands of their rightful owners, cybersquatters became typosquatters, registering misspelled variations of third party trademarks as domain names. But cybersquatters would always prefer to be cybersquatters rather than typosquatters, as consumers are more likely to seek the exact trademark of a third party as a domain name than accidentally enter some misspelled variation thereof. Thus, when the opportunity to register a domain that mirrors a well-known trademark presents itself, cybersquatters pounce.

In this case, the Complainant owned the disputed domain from 1998 to 2007, but allowed the domain registration to lapse (presumably by accident/neglect). The Respondent opportunist registered the domain as it became available. The Complainant's failure to renew the domain name was a costly one, as it probably lost a significant amount of web traffic while the Respondent held the domain, and had to hire a law firm and pay the expenses of a UDRP proceeding to get the domain back.

Given the value of domain names (especially those that are identical to trademarks) and the fact that cyber-pirates are waiting to immediately register domains upon their expiration, it seems prudent to have some safety mechanism in place to prevent the lapse of a domain registration. Some law firms are now offering to monitor domain name renewal deadlines for clients just as they would trademark deadlines. While many registrars will send their registrants reminders that their domain names will expire, some do not, and if a registrant's contact information in the Whois database is inaccurate, there is no guarantee that the registrant will receive the reminder.

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