Language no barrier to quick and cost-effective securing of an infringer’s domain name
When trade marks are being infringed online - and particularly where an infringing website and domain name is hosted overseas - a very good alternative to going to court can be launching a UDRP - a form of dispute resolution that is binding on the domain name holder. Where used appropriately, the proceedings are relatively quick and cheap – and, if successful, the domain name can be in your hands within a matter of weeks.
A significant barrier can be the UDRP Rule 11, which provides that you must file your detailed complaint in the language of the domain name registration agreement. So, Chinese infringers will typically have Chinese Registration Agreements, which means that you might need to go to the expense of having a Chinese lawyer translate your complaint.
However, there are exceptions to most rules! Justine Flockhart and Fabiana Atzeni acted for longstanding client Silverson Machines Limited in relation to silversonmixer.com, where a Chinese company had registered silversonmixer.com and was using it for a website promoting its own industrial mixers by using the Silverson trade mark and copied sections of Silverson’s website. We successfully argued that the language of the proceedings should be in English rather than Chinese and the UDRP panelist agreed. She went on to find that Silverson Machines Limited “holds trademark rights in the SILVERSON Mark” and that “the disputed domain is confusingly similar to Complainant’s SILVERSON Mark”. She agreed that our client “established that Respondent lacks rights or legitimate interests in the use of the disputed domain name and that Respondent registered and is using the disputed domain name in bad faith.”
Relief was granted to our client and it was ordered that silversonmixer.com be transferred from the Chinese registrant to our client.
The full decision can be found in this link: NATIONAL ARBITRATION FORUM (adrforum.com)