De Beers Group successfully fights back against cybersquatters with first legal judgment of its kind from WIPO

26 September 2016

International law firm Bird & Bird has helped leading luxury brand De Beers succeed 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 prominent sites being created in order to attack or tarnish their brand (including .sucks, .xxx and so on). New gTLDs such as .feedback and .review raise more nuanced issues of free speech, but it is now clear that arguments to that effect are not the complete trump card which registry owners hoped they would be.

In the debeers.feedback 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 all met, namely that:

  1. the disputed domain name was identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
  2. the Respondent had no rights or legitimate interests in respect of the disputed domain name;  and
  3. 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.

De Beers was advised by a team from Bird & Bird, led by Intellectual Property partner Phil Sherrell and including Intellectual Property associates Rebecca O’Kelly Gillard, Zain Ali and Abbas Lightwalla.

Phil Sherrell, IP partner at international law firm Bird & Bird said of the decision:

"This is an important victory for brand owners in the battle to keep control over the ever-expanding number of available domain names."

Melinda Willis (Legal Advisor, Anglo American plc speaking on behalf of the De Beers Group of Companies) said:

“De Beers is very pleased with the outcome of this first decision in relation to a .feedback gTLD registration. As a leader in the luxury sector, De Beers has made huge investments over a number of generations to grow the value of its brands. As any misuse of our IP could seriously undermine our brand equity, De Beers takes the protection of its IP very seriously. This includes adapting our brand protection and enforcement strategies to the ever-changing online world including, in this case, the new gTLD regime.”