De Beers has succeeded in its complaint against the registrant of the domain name debeers.feedback. The decision is significant as it is the first decision in relation to a .feedback gTLD registration and is good news for brand owners - contrary to the initial views of the registry owners at launch, they can successfully challenge such registrations.
Certain 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. Brand owners should be encouraged to stand up to attempts to hijack their marks, particularly where the facts show that the site in question is being used in bad faith.
In the debeers.feedback decision, the WIPO Administrative Panel held that the three requirements for a successful complaint under the UDRP (Uniform Dispute Resolution Policy) were all met, namely that:
- the disputed domain name was identical or confusingly similar to a trade mark or service mark in which the Complainant has rights;
- the Respondent had no rights or legitimate interests in respect of the disputed domain name; and
- 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.
The Respondent in this case registered the domain name debeers.feedback close to the end of the “Early Access Period” for the .feedback domain, before names in the domain became open to “General Availability” in January 2016. While some domains on the .feedback registry have been assigned a fixed cost, others invite potential registrants to "make offer" to the registry owners, e.g. Gucci.feedback. Other "review" gTLDs have similarly staged pricing structures for what the registry owners deem to be "premium" domains, making it difficult for brand owners to acquire a comprehensive domain portfolio without incurring very significant costs.
Jay Westerdal, the founder of DomainTools.com, commented at the initial launch of the .feedback gTLD that:
No trademark (sic) infringement will occur… the sites are all geared towards free speech and giving reviews. Confusing the public that the brand is running the site will not happen, each site has a disclaimer and makes it clear the brand is not running the site.
These comments were designed to bolster the legitimacy of .feedback domains and raised questions over a brand owner's ability to challenge third party registrations of a .feedback domain, and indeed of other review style sites, such as .sucks and .review.
However, various elements of the registration of debeers.feedback suggested that it was made in bad faith and a complaint was therefore made to the WIPO Arbitration and Mediation Centre.
Discussion and Findings
A) Identical or confusingly similar to a trade mark
It was held by the Panel that De Beers clearly had proven ownership of numerous registered trade marks for DE BEERS around the world, and the disputed domain name was identical to the De Beers owned marks. The website also made use of the De Beers logo and contained links to the company's website and official social media. This requirement was therefore clearly met.
B) The Respondent has no rights or legitimate interests in the domain name; and C) The domain was registered and used in bad faith
A number of arguments were put forward to demonstrate why the Respondent had no rights in the domain name and that the registration was both confusing to consumers and made in bad faith, including:
- Questions over the veracity of the reviews posted on the site;
- The nature of the disclaimer being small, insignificant and unnoticeable; and
- The use of a privacy service to register the disputed domain name.
The Panel's decision only dealt with one of these arguments, that relating to the veracity of the reviews. Eleven reviews were present on the website attached to the disputed domain name, of which five only appeared after a cease and desist letter was sent to the registrant. Interestingly, all five of these reviews supposedly pre-dated the letter of demand, which the Panel regarded as "extremely suspicious".
To show the registration of a domain name is made in "good faith", WIPO Panels require "evidence that the domain name is actually being used for the genuine airing of grievances or at least demonstrable preparation for such use." The Respondent had no explanation for the belated appearance of the “reviews” dated before the letter of demand was sent, resulting in the Panel finding that De Beers had demonstrated a prima facie case that the reviews were not genuine and the website to which the disputed domain name resolved was not being used in good faith for legitimate non-commercial or fair use purposes.
The Panel therefore ruled in De Beers' favour and deemed it unnecessary to address the other arguments advanced.
New gTLDs are still in their relative infancy and so it is as yet unclear what importance they will play in the online world. However, given that Google has recently spent over $25 million to buy the .app registry, it seems likely that sites with new gTLDs will begin to receive more and more prominence in search engine results. The ultimate fear for brand owners is that sites featuring their brands in conjunction with unsavoury content begin to appear next to brand owners' own websites in search results.
The debeers.feedback decision is relatively narrow because the Panel accepted De Beers' arguments relating to the legitimacy of the reviews on the website, and did not need to address the other arguments raised in the complaint which would have been of more general applicability. It is encouraging for brand owners though, and confirms the cost-effective nature of the UDRP complaints process as a means of controlling brand reputation in the online world.
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 .”