What to Do With Domain Names Such as starbucksnestle.com and starbucks-nestle.com?
The announcement of a commercial partnership between Nestlé (nestle.com, May 7, 2018) and Starbucks (starbucks.com, August 28, 2018) led to cybersquatting cases. Many domain names combining the “nestle” and “starbucks” trademarks were registered. DRP proceedings were initiated, including the D2018-1183 procedure undertaken by the Nestlé Products Corporation against a US citizen who had registered two domain names, including one on May 7, 2018, the same day as the announcement (WIPO, D2018-1183, Nestlé Products Corporation SA v. R., L., August 27, 2018, starbucksnestle.com and starbucks-nestle.com, transfer). This decision – like others concerning this partnership (WIPO, D2018-1398, Nestlé SA Product Company v. TPD, 7 tháng 8 năm 2018 (nestlestarbucks.com và nestle-starbucks.com, transfer)), offers the opportunity to revisit the legal points that arise in such situations.
Mergers and commercial partnerships between two well-known trademarks almost always lead to cybersquatting cases. In many cases, the mere announcement of such an event provokes a flow of abusive registrations of domain names on the same day or the following days. Sometimes the domain name is registered before any public announcement, which reveals a weakness in the chain of confidentiality.
One also saw two competing trademarks in the same domain name. As examples, the following ones the subject of DRP proceedings before WIPO:
|WIPO, D2012-0674, WhatsApp Inc. v. Private Whois, June 18, 2012, (whatsappandroid.com, whatsappipad.com, whatsappiphone.com, transfer)|
yahooebaycorp.com yahooebaygroup.com yahoo-ebay.com
|WIPO, D2001-0195, Yahoo! Inc. v. CPIC NET and S. H., May 8, 2001 (yahooebay.org, yahooebaycorp.com, yahooebaygroup.com, yahoo-ebay.com, ebay-yahoo.com, ebayyahoo.net, yahoobay.net, yahoobay.org, transfer)|
We can also mention the case of the association of trademarks of a manufacturer and a distributor.
|WIPO, D2014-1996, Decathlon SAS v. N. M., January 27, 2015 (decathlon-nike.com, transfer)|
|WIPO, D2015-0389, Go Sport v. C. T., April 16, 2015 (gosport-nike.com, transfer)|