A company that registers a domain name containing someone else's trademark may be engaging in the acceptable practice of "defensive registration" if (among other things) the domain name is a typographical variation of the registrant's own trademark.
That's the outcome of a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP), a case in which the domain name in dispute, idocler.com, contained the complainant's DOCLER trademark — but also contained a typo of the respondent's DOLCER trademark.
The UDRP complaint was filed by Docler IP S.à r.l. and related companies, all in Europe, that own the DOCLER trademark. According to the UDRP decision, Docler IP apparently uses the DOCLER trademark in connection with "a web platform with music, storytelling, and similar entertainment services."
The disputed domain name was registered by a Chinese company that "sells speakers and similar products under the name DOLCER," which is protected by an EU trademark registration.
Note the slight difference: The complainant's trademark is DOCLER, while the respondent's trademark is DOLCER. And, importantly, the respondent's domain name contains the complainant's trademark.
The UDRP panel had no trouble finding the domain name <idocler.com> confusingly similar to the complainant's trademark DOCLER, succinctly stating that the addition of the letter "i" to the domain name "does not obviate confusion." (Indeed, other UDRP decisions have found that inclusion of the letter "i" in a domain name that contains the complaint's trademark is irrelevant for purposes of confusing similarity. For example, in a dispute that included the domain name ambien-i.com, one panel said that the letter "i" is "a common prefix and suffix in domain names" that "may lead consumers to believe that a product or service may be ordered online" and therefore can "heighten the risk of confusion.")
However, a finding of confusing similarity is just one of three UDRP requirements, the third of which — bad faith — proved determinative. The panel in the idocler.com case found that the respondent had engaged in a "defensive registration" of the domain name and therefore had not acted in bad faith. As a result, the UDRP panel denied a transfer of the domain name.
So, what exactly, is a defensive registration?
According to email correspondence reviewed by the panel in the idocler.com case, "the Respondent has suggested that it registered the disputed domain name well prior to the commencement of this dispute in connection with its speaker business, to protect against typosquatting on its own DOLCER trademark." In other words, the respondent allegedly registered a variation of its own trademark as a domain to prevent a typosquatter from doing the same thing. The panel found this explanation acceptable.
(Interestingly, the panel reached this decision based on email correspondence submitted by the complainant, given that the registrant of the domain name did not submit a response. As I've written before, many trademark owners have lost UDRP cases even in the absence of a response, since there is no "default judgment" available under the UDRP. See: "The Most Embarrassing Way to Lose a UDRP Complaint.")
The idocler.com case is not the first UDRP case to address the issue of a defensive domain name registration. In a 2011 decision cited in the idocler.com decision, a panel described a defensive registration this way:
The Panel finds that the Respondent registered the Domain Name in 1999 as part of a policy of protecting itself against cybersquatters by the defensive registration of a large number of domain names similar to its own which might be used (if registered by others) to divert its customers or otherwise to damage its business.
In that case, the respondent was allowed to keep the domain name shoeby.com even though the complainant owned trademarks that contained the word "SHOEBY" — because the respondent owned trademark registrations for SHOEBUY.
The doctrine of defensive registration in both of these cases seems to have limited applicability and would not protect a domain name registrant in just any situation. In these two decisions, the doctrine seems to have been applied only because the following factors also were present:
- The respondent's trademark rights arose long before the domain name dispute.
- The respondent has not used its domain name to target the complainant.
- The record does not indicate that the respondent was aware of the complainant's trademark.
As a result, although a defensive registration may on occasion be applicable, the limited number of UDRP cases that have addressed the issue and the restrictions on the doctrine show that a true cybersquatter could not successfully assert that it registered a domain name to defend its own rights.
Written by Doug Isenberg, Attorney & Founder of The GigaLaw Firm