Cybersquatting: an Extortion Attempt for 95,000 GBP!

The Clydesdale and Yorkshire Banking Group’s Forex branch had just filed its trademark application with the U.K. Intellectual Property Office for its CYBFX brand only later find out that the domain name <cybfx.co.uk> had already been registered by a cybersquatter.
Upon further investigation, the bank discovered that the domain name was registered by an Eric Cheng based in Beijing, China just one day after it had filed its CYBFX trademark application.
After several attempts to recover the domain name, Cheng refused to transfer the domain name to the bank unless 95,000 GBP (130,000 USD ou 107 500 EUR) was to be paid to him. The domain name was being used to divert traffic to other financial institutions offering similar services to that of Clydesdale.
The bank, not submitting itself to extortion, was forced to file a complaint under the Dispute Resolution Service of Nominet, the official registry of <.uk> domains, and the decision ruled in their favor (Nominet DRS, D00019621, Clydesdale Bank Plc and Eric Cheng, cybfx.co.uk, 14 February 2018, transfer). The domain name registration was held to be an abusive registration, whereby the  domain name either:
  1. Took unfair advantage of or was detrimental to the rights of the complainant at the time or registration; or
  2. Has been used in a manner which took unfair advantage of, or was unfairly detrimental to the rights of the complainant.
Furthermore, the decision upheld the contention of the bank by ruling that there was no obvious justification for Cheng to purchase the domain name except to resell it to trademark owners. The domain name was ordered to be transferred to Clydesdale.
It is important to note that the purchase of a domain name per se is not illegal. However, in this case, the domain name was registered for the sole purpose of precluding the bank from registering the domain name in dispute and subsequently selling it to the bank for an exorbitant amount.
As defending your online trademarks is a priority, domain name management, and monitoring is essential. For further information, please contact IP Twins or request for a consultation now.