Just one day after Clydesdale Bank applied to register a trademark for “cybfx,” an individual named Eric Cheng purchased the domain cybfx.co.uk. Cheng then used the website to drive traffic to financial services websites, other than Clydesdale Bank.
After Clydesdale began legal action to retrieve the domain, Cheng demanded £95,000 to transfer the domain to Clydesdale. In legal documents, Clydesdale said, “The registration of the Domain Name was a deliberate attempt on the part of the respondent to seek private gain from the business by precluding the company from owning the domain unless we are willing to pay an extortionate sum of money.” It went on to claim that the domain was purchased primarily to sell or rent it to either Clydesdale or one of the bank’s competitors.
Nominet, the official registry for .UK domain names, ruled against Cheng’s purchase of cybfx.co.uk and ordered the transfer of the domain to Clydesdale. Fortunately for Clydesdale Bank, Nominet’s Dispute Resolution Service (DRS) differs from that of the UDRP. In UDRP cases, the Complainant must establish that a domain name was both registered and used in bad faith. Any domain name which is registered prior to the trademark cannot be determined to have been registered in bad faith, regardless of whether it’s being used in in a way that would otherwise infringe on the Complainant’s rights. Nominet’s DRS allows complaints when either the registration or the use is detrimental to the Complainant’s rights.
Corsearch’s Domain Vigilance platform enables trademark practitioners to discover, document, and monitor for potentially infringing domain registrations and abuse. For more information, please contact your Corsearch Account Manager or request a consultation.