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16 January, 2018 | Bret Gower
This case from 2016 involves a complaint from Converse Inc., an American company with a famous global brand presence and retail stores in multiple international markets including the US and New Zealand. Converse products (including shoes and clothing) are promoted heavily in global advertising campaigns and purchased by customers using the official Converse online store.
The complaint made by Converse was against an online store using the domain name www.conversenewzealand.co.nz registered by a UK resident. The Converse complaint was that the conflicting domain name was being used to sell counterfeit Converse products and that they were effectively cybersquatting (using the domain name in a way that prevents the authorised user from using it). Converse had evidence that a customer had bought counterfeit products from the conflicting domain named website believing them to be genuine products from an official Converse brand website.
The claim against the conflicting site was for “unfair registration”. Unfair Registration is defined as meaning registration or use of a domain name which takes unfair advantage or is unfairly detrimental to the complainant’s (Converse’s) rights.
Three requirements are needed to satisfy a complaint of unfair registration:
In this case the DRS appointed Expert found that Converse had proved all the elements of the claim including under the third element that there was a pattern of domain name registrations conflicting with other brands including Nike and New Balance.
The remedy for Converse was that the domain name was ordered to be transferred from the original registered owner to Converse.
This case provides guidance for domain name owners as to potential avenues for protection of their brand and trade marks against rogue domain name registration that might impact their business. It also provides warnings as to the risk of engaging in this type of behaviour for those inclined to press against the boundaries of acceptable online activity.
28 June, 2017 | Bret Gower