Hogan Lovells Advises Canyon Bicycle in First Ever 'Uniform Domain Name Dispute Resolution Policy' Case Filed Against a New gTLD
25 March 2014
LONDON, 24 March 2014 – Hogan Lovells' intellectual property team has successfully represented Canyon Bicycle GmbH in protecting their rights against the 'canyon.bike' domain name.
The case represents the first time the 'Uniform Domain Name Dispute Resolution Policy' (UDRP) has been used to protect intellectual property rights in a new 'generic top-level domain' (gTLD). To date, domain names disputes have been filed against domain names ending in the more commonly known .com or .net gTLD. The disputed domain name was registered under a completely new extension, .BIKE, proving a challenge for Hogan Lovells team. A unique approach was required in defending the client, whose own trade mark, 'CANYON', was registered under a 'top-level domain' (TLD) that was descriptive of its goods and services (bikes).
The defendant, a bicycle enthusiast and web designer based in the Netherlands had registered the 'canyon.bike' domain name only seconds after the open launch of .BIKE and was financially gaining from the website by the use of pay-per-clicks. This case presented additional challenges for the team as the domain name was registered under a privacy protection service, so the details of the underlying registrant were unknown.
David Taylor, Hogan Lovells intellectual property partner based in Paris and head of the International Internet Domain Name practice commented:
"This case was a significant victory for our client, Canyon Bicycles and represents a pivotal point in online brand protection strategy. Over 1,400 new gTLDs such as .BIKE, will be launched within the next couple of years, changing the face of the internet as we know it. This case was a historic decision and sets an important precedent as it demonstrates that the UDRP can adapt and evolve and be a strong rights protection mechanism in a rapidly changing world for brand owners."
The UDRP is one of a number of rights protection mechanisms that apply to all new gTLDs as they launch over the coming months. It was designed as an alternative to court litigation specifically to deal with domain name disputes in a more efficient and cost effective manner.
The cross-border team at Hogan Lovells succeeded in shutting down the website and transferring the domain name to its rightful owner. Canyon Bicycles, one of the worlds' leading manufacturers of racing, mountain and triathlon bicycles is a long-standing client of the firm. Morten Petersenn (partner) and Thorsten Klinger (senior Associate), based in Hamburg, manage the global trademark portfolio of Canyon Bicycles and have coordinated the case, while David Taylor has represented the client before the UDRP panel.
David Taylor is also a WIPO (World Intellectual Property Organisation) panellist for the UDRP.
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