Case Study: Domain Squatting Claim

Stephen Attree and Amelia Denton of mlplaw’s Intellectual Property Team, represented Imperative Training Ltd. T/A defibshop.co.uk in a Domain Squatting claim.

This matter was crucial for our client as domain squatting poses a serious threat to business owners by diverting traffic from their websites. Visitors will associate the malicious domains with the brand, resulting in lost sales and reputational damage.

Our client is the owner of the trademark ‘defibshop.co.uk’ since 2010 and has operated a website since 2006 under the domain name ‘www.defibshop.co.uk’. The disputed domain name ‘defibshop.com’ was created on 16 June 2021 and was re-directing traffic from this website to a website un-associated with our client, owned by the Respondent. mlplaw filed a Uniform Domain-Name Dispute Resolution Policy (UDRP) on behalf of our client with the WIPO Arbitration and Mediation Centre.

We successfully argued and demonstrated sufficient evidence in order to show all three elements required:

• The disputed domain name is identical or confusingly similar to a trade or service mark which the Complainant has rights;
• The Respondent has no rights or legitimate interest in respect of the disputed domain name. The Panel noted that the defendant used the domain name entirely for the purpose of redirection to their website and inferred it was registered opportunistically to take unfair advantage of our clients trademark; and
• The disputed domain name has been registered and is being used in bad faith. The panel noted it was not denied that the Respondent was well aware of our client and their business activities, and reiterated the previous point being the purpose of redirection to disrupt our clients business by confusing internet users.

The respondent and its solicitors, defended their use of the disputed domain name on all elements unsuccessfully.

The domain name was ordered to be transferred to our client. The full decision can be read here.

mlplaw urges clients to take early action to avoid matters like this occurring and can provide advice on how to prevent Domain Squatting.