How to get the transfer of a domain name such as brother.tld? The Japanese company Brother Industries is confronted with the generic character of the single word which composes the “Brother” trademark. Nevertheless, generic does not necessarily mean evocative or descriptive. Thus, it can be said that the trademark “Brother”, which designates electronic equipment, is not descriptive. Given the brand’s reputation, Brother Industries has to resort to surveillance services whose function is to detect any possible misuse of the brand. However, given the genericity of the word making up the mark “Brother”, any legal qualification based on facts considered to infringe the trademark rights requires the demonstration of a likelihood of confusion.
Concerning domain names, Brother Industries can only obtain an end to cybersquatting if the domain name brother.tld is unmistakably associated with content targetting Brother Industries’ products.
Thus, in the WIPO decision DCO2021-0017, concerning the domain name <brother.com.co>, the transfer was ordered on the grounds, on the one hand, that the content of the website associated with it reproduced the trademark “Brother” as registered with the national/regional industrial property offices and that, on the other hand, the defendant offered products identical to those of Brother Industries (WIPO, DCO2021-0017, Brother International Corporation v. Jiafen Wu, Brother Business Machine Co., Ltd., May 1, 2021, transfer, panelist: Matthew Kennedy). The ruling does not specify whether these were products from Brother Industries’ manufactures, counterfeit goods or, if there were no products, fraud).
