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. Domain squatting poses a serious threat to business owners by diverting traffic from their websites. Consequently, visitors associate malicious domains with the brand, resulting in lost sales and reputational damage.

Background and Facts

Our client has owned the trademark ‘defibshop.co.uk’ since 2010. They have 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. It redirected traffic from our client’s website to a site unassociated with them, owned by the Respondent.

Legal Action Taken

In response, mlplaw filed a Uniform Domain-Name Dispute Resolution Policy (UDRP) on behalf of our client with the WIPO Arbitration and Mediation Centre.

Our Successful Argument

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

• The disputed domain name is identical or confusingly similar to a trade or service mark owned by the Complainant.
• The Respondent has no rights or legitimate interest in the disputed domain name. The Panel noted that the Respondent used the domain solely for redirection to their website. They inferred that the domain was registered opportunistically to take unfair advantage of our client’s trademark.
• The disputed domain name was registered and is being used in bad faith. The Panel noted that the Respondent was well aware of our client and their business activities. They reiterated that the redirection aimed to disrupt our client’s business by confusing internet users.

Outcome and Decision

The Respondent and its solicitors defended their use of the disputed domain name on all elements. However, they did so unsuccessfully.

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

Our Advice for Businesses

At mlplaw, we urge clients to take early action to avoid matters like this. We can also provide advice on how to prevent domain squatting. Contact our Commercial & IP team to find out more about the Trademark protection.