With the expansion of top-level domains (gTLDs), domain names that are used to offer fake products and/or obtain personal information from consumers are becoming more and more varied. It is common to find domain names that incorporate trademarks and use different extensions (.shop, .shoe, .restaurant,, .info…) to create websites that look identical to the official websites and to perpetrate scams, especially with well-known trademarks.
Practice shows that one way of defending IP rights in the online environment requires its constant monitoring, which ensures a faster and less burdensome protection.
In this sense, having a legal services provider that can offer a tool with high monitoring and rapid response capabilities to eliminate the infringing domain, for example, promoting a takedown, is, today, essential. And aware of this, our firm offers this possibility, combining the benefits of the latest IT technology with the advice of our specialized lawyers.
The opacity that favours the online environment sometimes makes it difficult to defend the IP rights, as we find that information on the holder of an infringing domain name is hidden for privacy reasons. However, WIPO has created a new pilot tool, the RDRS (Registration Data Request Service), which allows those with a legitimate interest to access the identification and contact details of the holder of an infringing domain name and thus be able to implement less costly and complex defensive actions.
When prior complaint actions are unsuccessful, it becomes necessary to turn to the WIPO Arbitration and Mediation Center to recover the infringing domain name, which is possible through the so-called UDRP proceedings.
Given the diversity of extensions that exists today, the problem for trademark owners multiply, and they may find that their trademark as been incorporated into several domain names, with different extensions. This could force the trademark owner to go through different proceedings, with the consequent additional costs. But to face these eventualities, WIPO’s regulations once again provide for the possibility of including several domain names in the same proceeding if, for example, certain patterns are given and show a link between them.
Our daily practice shows that it is crucial to have fast action mechanisms adapted to the online environment, as well as having a thorough knowledge of the defence possibilities offered by the legal system. Do not fail to protect your rights on the Internet.
Fernando Ortega Jorge Díaz
Abogado-socio Abogado
