An end to Cybersquatting
by Eran Soroker & Nour Abo Foul
From a branding perspective, choosing a domain name is a simple task. If it is memorable, easily spelt and suggests the nature of your business, you’ve got yourself a winner. From a legal perspective – this task might not be as simple.
Domain names are a “first come, first served” commodity. The first person to purchase a domain name holds the domain name until it is sold or until it expires. An exception to this rule is cybersquatting. Cybersquatting occurs when a person registers a domain name containing a trademark of another without a legitimate purpose, preventing the trademark owner access and possibly reselling the domain name to the trademark owner at a profit. In cases of cybersquatting, the trademark owner may seek the return of a domain name that contains their trademark through Dispute Resolution.
In Israel, the Dispute Resolution Procedure – IL-DRP is intended to provide expedited resolution for disputes regarding the allocation of Domain Names under .il. Such a proceeding can be presided by a single or multiple membered panel.
Under these proceedings, a trademark owner must show that (1) the domain name was registered in bad faith (2) with the intent to profit and (3) is confusingly similar to the trademark at hand. In determining bad faith, the panel will consider the strength of the trademark owner’s rights. This is done by establishing; whether the domain name owner has any legitimate claim to the name; whether the domain name has been used for legitimate business purposes; whether the domain name owner has displayed an intent to divert customers away from the trademark owner’s site and whether the domain name owner has offered to sell the domain name for a profit. Once establishing the above, a trademark owner may recover a domain name that was registered in bad faith.
In 2019, Soroker Agmon Nordman represented a trademark owner in the case of Tal-sh Technologies Ltd v. Boaz Monos. In the year 2000, the domain <icredit.co.il> was registered by Boaz Monos, but left unused, infringing Tal-sh Technologies’ registered trademark “iCredit”. Our office filed a complaint on behalf of Tal-sh Technologies Ltd. with ISOC-IL requesting the disputed domain name be transferred to its rightful owner. The complaint proved all the prongs needed in such a procedure, i.e.: the disputed domain name is confusingly similar to the registered trademark; and that the disputed domain name was registered in bad faith. In August 2019, the ISCO-IL DRP panelist granted our client’s request and ordered that the disputed domain name be transferred to Tal-sh Technologies Ltd., sweet victory.
Credibility, Reputation & Presence
In today’s online commerce era, domain names play a important role in building a reputable brand. A strong domain name adds credibility, internet presence and can go a long way toward generating traffic to a website. The bottom line is not to underestimate the importance of your business’s domain name and how crucial having the right one is to your business, and if someone takes it, go get it back!