Category: Brand Protection

New document: 5 minutes to understand UDRP procedure

5 minutes to understand - Domain names - UDRP procedure - Nameshield

Established on ICANN’s proposal, the UDRP (Uniform Domain-Name Dispute Resolution Policy) extra-judicial procedure allows to sanction obvious and indisputable infringements of a trademark right resulting from the registration of identical or similar domain names by third parties, a practice commonly referred as “cybersquatting “.


UDRP applies not only to generic extensions (gTLDs) in .aero, .biz, .com, .coop, .info, .jobs, .mobi, .museum, .name, .net, .org, .pro, .travel and new extensions (new gTLDs), but also to country code extensions (ccTLDs) of which the registry has accepted the UDRP principles.

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New document available on the Nameshield’s website: “5 minutes to understand – Abusive domain names registrations

5 minutes to understand - Domain names - Nameshield

The digital world is in perpetual evolution and every days, new domain names are registered around the world.

Among these new registrations, some can potentially affect your notoriety, your activity, and your results. Fraudsters, through these abusive domain names registrations, seek to benefit from your notoriety as quickly as possible.

Find in this “5 minutes to understand” document, available for download on the Nameshield’s website, the different practices of abusive domain names registrations that can affect your brand and the actions to take depending on the infringement caused to the brand.

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New document available on the Nameshield’s website: “5 minutes to understand – Domain names: which procedure?

5 minutes to understand - Domain names - Procedure - Nameshield

Names’ holders must protect their brands and domain names against fraud and abuse just as they would protect any other valuable asset. The infringement of your domain name weakens the strength of your brand.

If, despite defensive registrations, which are a first line of defense, you find out that a third party has registered a disputed domain name, procedures exist to stop the infringement of your trademark and stop the damage.

Find in this “5 minutes to understand” document, available for download on the Nameshield’s website, these different dispute resolution procedures related to domain names.

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Booking.com, a generic term turning into a brand?

Booking.com - domain name
Image source: Julius_Silver via Pixabay

A trademark must be “distinctive”, which is why no one can register a generic term as a trademark.

However, a decision of the US Supreme Court on June 30, 2020 allows Booking.com to register its domain name as a trademark.

If for USPTO (U.S Patent and Trademark Office), “booking” is a generic term, and adding the .COM would amount to adding “Company” to a name, thus arguing that booking.com cannot be registered as a trademark, the Court decided otherwise.

Indeed, it considered that “.COM” could not be compared to “company” since the essential criterion would be the identification of consumers.

In particular, the online travel company presented consumers surveys indicating that 75% of consumers thought Booking.com was a brand.

Of course, this first argument, easily challenged by Judge Breyer, was not the one that hit the nail on the head in the final decision. Since a domain name can only belong to one holder, the risks of confusion that must be avoided by trademarks could not arise here, since no one else can use the name Booking.com.

Despite the registration of the booking.com trademark, the company will not be able to use it as a trademark right in disputes that could oppose it to other companies using the generic term “booking” in their trademark.

To read the full decision, click here.

Municipal elections 2020: buzyn2020.fr and buzyn2020.paris domain names redirect towards Anne Hidalgo’s campaign

Municipal elections 2020: buzyn2020.fr and buzyn2020.paris domain names redirect towards Anne Hidalgo’s campaign
Image source: Sadnos via Pixabay

Following the announcement on Sunday February 16, of Agnès Buzyn’s candidacy to Paris municipal elections, several political journalists discovered on Monday that the domain name buzyn2020.fr was registered but redirected towards “Paris en commun”, the campaign website of another candidate, Anne Hidalgo.

Several other names were registered on Sunday night, also redirecting towards Paris en commun’s homepage like buzyn2020.paris, agnesbuzyn2020.fr and agnesbuzyn2020.com.

If several of these names were anonymously registered, two of them were registered by the association “Montreuil en Commun”, a group of “four municipal councilors” who claims to be “without any political label” and explains to Numerama the fact that these names were available “indicates the improvisation of her candidacy and LREM’s lightness regarding a serious matter such as a candidacy to run for Paris’ mayor”.

Raising awareness to cybersquatting risks

The LREM candidate will not be able to use the domain name buzyn2020.com either, which was registered on Monday by Crisalyde, a risk and crisis management consulting company.

“I took the opportunity to raise awareness. It’s my job, I saw a risk and I took advantage of it”, explains Selim Miled, Crisalyde’s CEO, to the Parisien.

Cybersquatting is a practice that consists in taking a domain name by registering it, using or mentioning a trademark, a business name, a patronym or any name on which the applicant has any right, in order to make material or moral profit from its current or future notoriety.

Thus, Crisalyde registered 6 domain names: buzyn.paris, agnesbuzyn2020.paris, buzynpourparis.com, buzynpourparis.fr, buzyn2020.info and buzyn2020.com. “As soon as Agnès Buzyn’s team contacts me, I will give them the domain name at the purchased price, with a friendly advice” adds Selim Miled.

What strategy to adopt against cybersquatting?

Agnès Buzyn’s team will have to contact the persons who registered these names, who may decide to graciously give them back or resell them at prices they will have set.

However, legal actions exist aiming to retrieve a cybersquatted domain name, like the UDRP procedure (Uniform Domain Name Dispute Resolution Policy). This procedure will allow to suppress or transfer the domain name.

And lastly, in order to prevent any cybersquatting risk, it is recommended to implement a domain names registration monitoring to be immediately alerted of any new domain names registration that can potentially infringe your notoriety or your business.

For more information on our online brand protection expertise and domain names recovery procedures, don’t hesitate to contact a Nameshield consultant.