Safenames, the global leader in enterprise brand protection, today announced a multi-complainant UDRP win/recovery involving New gTLDs in a dispute with the registrant that lasted nearly a year. In total, Safenames recovered 18 domain names for a total of 15 different trademark holders (entities), in just two cases.
Safenames was originally alerted that the registrant in these cases was infringing on another, initial domain (Nvidia.email). They filed and received a winning decision from CAC for that domain in just two months. While Safenames legal team was in the process of researching this case they uncovered additional instances of this practice by this registrant. Safenames was diligent in launching a campaign to alert various trademark holders of this practice, which ultimately led to the most recent, multi-complainant UDRP win.
This most recent win is significant for Safenames, as multiple complainant cases are much rarer than single complainant cases, and present a unique set of challenges. The biggest challenge is often unifying corporate entities because corporations/enterprises typically operate alone to promote and protect their own brand(s). Safenames' most complex internal challenge, according to Micah Ogilvie, Chief Legal Counsel for Safenames, "was to ensure that every argument was relevant to all entities involved, in only 5,000 words, and to keep costs down. As long as we are able to do these two things effectively, we often find that companies are willing to set aside any intrinsic differences and work together with us to complete the task at hand." Further, Safenames has many multi-complainant case wins under their belt. "Not only do we have extensive knowledge of the UDRP, I would say we are pioneers in cases involving multiple complainants following our English Premier league case in 2009, which is well documented and used as UDRP precedent," said Ogilvie.
As part of the most recent win, Safenames successfully recovered domain names for Molton Brown Limited, F. Hoffmann-La Roche AG, GlaxoSmithKline, Vertu Corporation Limited, Lyondellbasell Industries, VKR Holding A/S, G4S Plc, Logitech International SA, Auto Trader Limited, Ryanair Limited, Associated Newspapers Limited, Wowcher Limited, Savills plc, Red Letter Days Limited, and Oxfam International, to name a few. This was the first ever class action ("Multiple Complainant") UDRP involving New gTLDs.
Mr. Ogilvie worked closely with each entity involved, filed the UDRP with the Czech Arbitration Court (CAC) against the registrant, and was able to demonstrate that the registrant had registered each of the domain names in bad faith and was creating "confusion" for each of the brands/TMs, profiting from and acting in bad faith in his registration(s). As a result, the domains were transferred back to the corresponding Complainants.
Miss. Natasha Sharma, Head of Brand Protection services said, "We are very pleased that Safenames was able to win this dispute for multiple trademark owners. This pro-active approach plays a big part in Safenames brand enforcement strategies where multiple domain names can be retrieved via a single dispute".
Review the full CAC decision:
Safenames is the global leader in enterprise brand protection, specializing in domain management and online trademark enforcement for companies across the globe. The company is headquartered in Milton Keynes, England with regional offices in Vienna, Virginia, and Brisbane, Australia.
Brand Protection Manager
Micah J. Ogilvie
Chief Legal Counsel