This issue is filled with great insights and expert commentary on areas that are relevant to the legal landscape and highlight how the business community is embracing technology, media and telecommunications. There are various topics covered, from new ways of working and digital transformation in the finance sector to data protection regulatory updates and guidance. We also have a series of articles that focus on e-commerce across a number of jurisdictions.
You will also find insights from our lawyers around real estate analytics, tech trends, and data centres.
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However, given the degree of domain name scams abound in cyberspace, it is often parodied as the Wild Wild West.
Trademark owners understand that domain names can function as trademarks and are often first in line to register their trademarks as domain names. However, they are not the only parties to realise the inherent value of domain names. Domain name registrations are acquired on a first-come, first-served basis. Enter the cybersquatter, a cyber villain who abuses the first come first served system by registering domain names incorporating the often well known trademarks of brand owners before the legitimate trademark owner manages to register the domain name. The cybersquatter registrant then offers the domain name registration to the trademark owner for sale at a ransom price way above the cost of the registration.
Such cyberpirates continue to illegitimately profit on the Internet by hijacking the inherent value of trademarks owned by the brand owners’ marks.
Indeed, some cyberpirates register domain names that incorporate valuable trademarks to benefit commercially from Internet traffic that mistakenly arrives at the registrant’s website. They misappropriate trademarks for such commercial gain rather than purely for trying to sell on such domain names.
Typosquatting is also another innovative method of trademark misappropriation. In this case, the domain names are registered incorporating misspelled variants of trademarks including nicknames or locally adopted variants thereof. This can be particularly damaging to the brand owner as the locally adopted variant of the trademark could be the term, which has brand recognition and gravitas with the local consumers in the market.
Another egregious form of cybersquatting occurs when competitors register domain names incorporating the trademarks of their rivals in order to deny them use of their own marks as featured addresses in cyberspace.
Cybersquatters are particularly adept at mining the value of trademarks as used in domain names. In such cases, rather than turning a quick buck by on-selling domain names incorporating trademarks at a ransom, cybersquatters are in it for the long haul with the gems, which could potentially make exponential gains due to the inherent trademark value of the domain name.
Thus, for instance, cybersquatters often link the domain name incorporating a trademark to websites featuring pornographic content, since pornographic sites continue to be sources of easy money on the Internet. The registrant of the domain name would then receive a click-through fee whenever an Internet user inadvertently arrived at the pornographic website and clicked on one of the links.
Specific domain name scams examples
Unfortunately, registrants of domain names are easy targets for domain name scams given the fact that most of the details for the registrants of domain names are publicly available on the internet (i.e. company name, contact name, email address and phone number) through websites such as “Whois” (www.whois.com).
As a registrant of a domain name, you may encounter common domain name scams such as the following possibilities:-
In order to combat these types of domain name scams, you need to be armed strategically with sound standard operating procedures such as the following:
Any notifications from a domain name registrar informing you that it has received an application from an unauthorised entity to register a domain name which incorporates your trademark are to be treated with great suspicion.
Particularly, you should be wary of Chinese internet keywords. Remember that the internet keywords being offered to you are roman letters rather than Chinese characters and that Chinese websurfers are more likely to enter Chinese characters than English words when looking for your company. In such circumstances, you would really only want to own some Chinese internet keywords if you foresee that your name in roman letters is going to be the identifier for your company in the minds of Chinese consumers rather than a string of Chinese characters and you would be sufficiently disturbed if such Chinese consumers were to be redirected to another’s website if they were to type your company’s name into the address bar of their internet browser.
The reality is that cybersquatters will continue to register domain names incorporating your trademarks. This is impossible to prevent due to the multitude of available domain names out there especially with the recent proliferation of available domain names such as .money, .party, .wtf, .fund, .legal, .poker, .dad, .cash etc. Practically, it is a near impossibility, not to mention prohibitively costly, to reserve every available domain name out there related to your business. Generally, it is recommended that you register domain names for your core and important brands in the countries of interest to your business.
If you do decide to register a domain name, which has been suggested by a company sending notifications such as those described above, do not use them. You should choose your own domain name registrar, which does not engage in such activities.
In order to combat the multitude of domain name scams out there on the World Wide Web, you need to sit down with your IP lawyers to find out the practical usage of your trade marks on the internet and how best to protect them in this context.