The InterContinental Hotels Group has obtained the transfer of 1,500 domain names from a single registrant, Daniel Kirchof, in one go. IHG obtained the order using the World Intellectual Property Organisation’s domain name arbitration service. WIPO is the leading arbitration service authorised to hear domain name disputes under the UDRP procedure. The UDRP is the Uniform Domain Name Dispute Resolution Policy and it provides a quick arbitration procedure for disputes over top level domain names such as ‘.com’ and is designed to enable quick action to be taken by brands against unfair cybersquatters. Under the UDRP procedure, the claimant has to prove that the domain name is confusingly similar to a name in which it owns trade mark rights, the registrant has no legitimate rights in the domain name and it has been registered and used in bad faith. In this particular case, IHG joined a large number of applications together against a single registrant. It failed to obtain the transfer in respect of just 10 of the names. WIPO decided that it would be procedurally more efficient to deal with the 1,500 cases in one joined case. Kirchof has not lost everything, though – he still has another 70,000 or so domain names.
Paul Gershlick, a Partner at Matthew Arnold & Baldwin LLP and editor of www.upload-IT.com, comments: ‘Cases like this bring to the fore how important it is to obtain domain names relating to your brand before cybersquatters do. Although there are useful procedures to obtain the transfer of domain names quickly as happened here, cybersquatters can do untold damage to your brand before you obtain the transfer. They may persuade you to pay significant sums of money for what should really be your brand, just for you to avoid the uncertainty of going to an arbitration service where you may not win, and to enable you to obtain a transfer quickly. In the meantime, to keep the pressure on you and to increase the price you may be willing to pay, they may link from sites containing the domain names to your competitors or to porn sites. Far better to have a brand protection strategy and register in advance all common spellings and mis-spellings of your brand and across all top-level domains such as ‘.com’, ‘eu’, ‘.biz’ and ‘.uk’. But as IHG saw here, there may be a huge number of possible domain names that may be based on your brand, so the task of definitively registering everything relevant may not be easy.’