De Beers have succeeded in its complaint against an individual who registered the domain name debeers.feedback. The decision is significant as it is the first decision in relation to a .feedback gTLD (generic top-level domains) registration. It is good news for brand owners, demonstrating that – contrary to the initial views of the registry owners at launch – they can successfully challenge such registrations.
Some of the new gTLDs released recently have caused serious concerns to brand owners, because of the risk of sites being created in order to attack or tarnish their brand (including .sucks, and .xxx). New gTLDs such as .feedback and .review raise issues of free speech, but it is now clear that arguments to that effect cannot compete with intellectual property rights.
In the decision, the World Intellectual Property Organisation (WIPO) Administrative Panel held that the three requirements for a successful complaint under the UDRP (Uniform Dispute Resolution Policy) were 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.
This decision shows that the new gTLDs will not have the impact against rights holders as once expected. When the gTLD .sucks was first announced there were concerns that individuals may purchase will use this with famous trade marks such as cartier.sucks to create a website for complaints or derogatory marks against the company.
If you are experiencing domain name issues such as the above, do not hesitate to contact us and one of our experienced team will be more than happy to assist.Â