October 11, 2021

The Men With The Golden Domain

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Staying on top of your domain portfolio is crucial to protecting your brand online. Monitoring your portfolio helps to avoid domain expirations, identifies potential gaps, risks and redundant domains so you maintain the right sized portfolio.

Managing a domain portfolio is not always an easy task, as demonstrated by the worlds most visited website, Google. The Google search platforms handle 3.5 billion searches every day, which saw the company’s profits hit $181 billion last year. This means one-minute of disruption to their service, due to the simple mistake of a domain expiration, could cost the company $2.5 million, but that would never happen at a tech giant like Google right?

In fact, due to mismanagement of their domain portfolio, there have been two instances in the last 6 years where members of the public have been able to acquire the golden google domain.

The first incident: Google.com 2015

Sanmay Ved

Famously, in 2015 Google missed the deadline to renew Google.com, creating an opportunity for former Google employee Sanmay Ved to slip in and acquire the domain rights for just $12. Ved purchased the domain using Google’s domain registration service after the company had lost ownership of it. However, this acquisition didn’t last long with Google reversing the transaction and sending Ved a cancellation order after just one minute, returning ownership of google.com back to Google.

Despite the happy resolution to this event, with Google donating money to charity in Ved’s name, allowing google.com to expire could have had catastrophic results for the company.

The second incident: Google.com.ar 2021

google.com.ar screengrab (2)

As reported by the BBC in April of this year, lightening struck twice, with Google’s Argentinian domain being bought by a web designer while the site was out of action for two hours.

Nicolas Kurona noticed that google.co.ar was down, so he decided to go on to the Network Information Center Argentina (NIC) searching for Google - and up popped Argentina's Google domain (screengrab above), available for just 270 pesos (£2.08/$2.90). Although, once again this acquisition was short lived with the NIC returning the domain back to Google after just a few minutes.

The assumption for this event is that Google has simply forgot to renew their Argentinian domain, as they had done previously with google.com in 2015. However, the company has since claimed that its licence for the domain hadn't expired - and was not due to expire until July 2021. This claim has been verified by the Open Data Córdoba group (which is dedicated to tracking Argentine domains). Meaning that it’s still unclear why Google's domain was released, but for some reason, for a few minutes at least, the golden domain was owned by another member of the public.

The key learning from these events is that managing a global domain portfolio is not an easy task, no matter the size of the organisation, but it is a task that must be done effectively due to the significant damage that one mistake can have. At Lexsynergy, we do the hard work for you ensuring your domain portfolio is managed well and that your domains are renewed on time.

If you would like more information regarding our domain management services reach out to us at Info@lexsynergy.com

October 01, 2021

The Agent 100 Campaign

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The Lexsynergy ‘Agent 100’ campaign has been created to raise awareness of how easy it is for online crooks to infringe a brand’s trademark online and how we can help to reduce this significant threat.

Whilst our parody of a well-known British spy will not damage his reputation, online trademark infringements pose a convincing, and credible threat to organizations of all shapes and sizes who operate online.

This threat is a result of the advanced digital ecosystem the world now operates in, which heightens the possibility of third parties illegally distributing digital content, products and services that infringe upon a brand’s trademarks. This means that companies need to be aware that it is now easier, simpler, and cheaper than ever before to infringe upon Intellectual Property Rights.

Dealing with online infringements is also far more complex as trademark holders need to navigate through numerous legal jurisdictions and follow countless procedures and formalities to tackle an infringer. This can become a time consuming and expensive process to manage.

However, this is where Lexsynergy steps in, our 100% UDRP complaint record demonstrates our vast expertise in this area, winning cases worldwide. Our 24/7/365 support works day and night to ensure that those who infringe upon our clients’ brands are dealt with swiftly and effectively. Additionally, our low fixed fees and no long-term contracts means our clients can afford to protect their trade marks online and both reduce and combat the damage that can be done to their brand.

If you would like to find out more information about any of our services or need assistance with a UDRP complaint or take down of infringing content, reach out to us at brandprotection@lexsynergy.com.

September 14, 2021

Do your homework before pouncing on a UDRP (domain complaint)

It May Sound Like Your Cat, But That Doesn't Mean You Will Win A UDRP Complaint

The UDRP is intended to provide trade mark holders with an efficient and cost-effective forum to recover domains that infringe upon their trade marks.

The efficiency of the UDRP does not mean that a trade mark owner can file a complaint without first doing their homework into the Respondent and its activities.

Puma, the international footwear and apparel company, found out the hard way in Puma SE v Puma, Exports Pvt Ltd (D2021-1757).

An Indian manufacturer and exporter who makes small leather goods, such as wallets and passport covers registered the domain pumaexports.com on 2 September 1998. It did not use the mark “PUMA” on its products but as part of its company name.

The Respondent had used the word Puma as part of its company names since June 1990, updating it to Puma, Exports Pvt Ltd in March 1996.

To be successful in a UDRP Complaint, the Complainant must prove all three elements below:

  1. The domain is identical or confusingly similar to its trade mark;
  2. The Respondent has no rights or legitimate interests in the domain; and
  3. That the domain was registered and used in bad faith.

The Case

Proving the first element was straight forward but the Complaint came unstuck at the second and third elements.

The onus to prove the second element falls on the Complainant, which it failed to do. The Complainant appears to have overlooked the Respondent’s use of the mark on its website, as a company name and other evidence proving that it had been commonly known by the domain.

The Complainant also failed on the third element as it was conceivable that the Respondent did not intend to take advantage of the Complainant and its reputation. The Panelist listed six possible reasons why it was not bad faith:

  1. “puma” is a type of animal, a large cat.
  2. The Respondent is not selling PUMA branded leather goods.
  3. The Respondent is not selling sports apparel or footwear.
  4. The Respondent’s logo and trade dress is completely different to that of the Complainant.
  5. The Complainant’s Indian trademark registration does not appear to cover the Respondent’s goods.
  6. The Complainant did not enter the Indian market in a significant way until 2005.

The Respondent successfully raised the argument that “This is not a case of cybersquatting, while the Policy’s purpose is to combat abusive domain name registrations and not to provide a prescriptive code for resolving more complex trademark disputes.”

The Respondent also argued that the Complainant was engaged in Reverse Domain Name Hijacking (RDNH), meaning that the complaint was brought in bad faith to try and deprive the Respondent of its domain.

The Panelist stated that “the Complainant is entitled to enforce its trademark rights and to push the penumbra of its protection, but the Complainant is not entitled to file a misleading complaint”.

The Panelist then went on to cite several incorrect and misleading statements, which highlights the dangers of template arguments that are often found in UDRP complaints. The most prominent misleading statements were:

“There are no honest business activities carried out by the Respondent through the nearly identical/deceptively similar domain name.”

“The Respondent’s choice of domain name is clearly fraudulent and with complete knowledge that such adoption is unauthorized.”

The Panelist concluded by finding the Complainant guilty of RDNH and closed with a pertinent statement “A complainant should have clear evidence before alleging dishonesty or fraud, there is no such evidence here”.

Summary

A cat or puma has 9 lives but in the UDRP you have 1 so make sure you have thoroughly investigated your opponent before filing a domain complaint. Guard against template or generic statements.

The reason Lexsynergy has a 100% success rate in domain complaints, worldwide, is because we take the time to assess the potential infringer’s rights to avoid the situation that has scared a PUMA.

Read the full decision here: https://www.wipo.int/amc/en/domains/search/text.jsp?case=D2021-1757