IPRs On-line Specific Legal Services through Venequip, SA c. Oneandone Private Registration

The most frequent ways of receiving a Cybersquatting Case, are through an appropriate Trademark Online Monitoring Service, and through the fact as such, which it means, that the Trademark Owner, finds out either at the moment of a particular domain name registration that such domain name has been registered by a Third Party, or because it has been informed about the existence of such scenario on the Internet.

Once IPRs On-line receives a Case, the first action that we take is to conduct and provide a Preliminar Analysis about the circumstances of the Case, in order to provide a percentage (%) of success regarding the transferring of the domain name(s) to its legitimate owner, meaning the Trademark Owner. Usually it takes no more than 3 business days.

Based on a real Case example, on June 2019, a 90-years Venezuelan unique authorized distributor of equipment and heavy machinery of the CAT® trademark, named Venequip, S.A., founded in July 12, 1927, owner of several Venezuelan trademark registrations as EQUIPOS DE VENEZUELA VENEQUIP, MAQUINARIAS VENEQUIP, SERVICIOS V.I.P. VENEQUIP, and VENEQUIP, requested our Specific Legal Assistance Services, due to the fact of finding out -through a very simple Google Search on the Internet- the existence of the domain name <venequip.com.mx>, which Web Site content results to be active being almost identical to the Company Venequip, S.A. Web Sites, inferring a strong connection with the Company Venquip, S.A. or that it was also operating in another jurisdiction as Mexico.

Once we provided the Preliminary Analysis, the success rate (which on this Case was of 95%), the legal alternatives to obtain the transferring of the domain name <venequip.com.mx>, framed under the .MX Dispute Resolution Policy, considered as a Variation of the UDRP named as: “Política de solución de controversias en materia de nombres de dominio .MX (LDRP)”, plus another aspects of the Case as the use of a Privacy Service by the Registrant, language of the proceeding, and our reasonable professional fees, the Client realized about the extraordinary advantages and benefits of filing a Complaint through a Dispute Resolution Provider as the WIPO Arbitration and Mediation Center (the WIPO Center), which is equipped with multiple skills.

The Case was filed in accordance to the .MX Rules, the Complaint was notified to the Respondent on June 21, 2019. In this Case the Respondent did not submit a Response or any communication, and on August 5, 2019 a Decision was rendered by one of the Panelist and the domain name <venequip.com.mx> was successfully transferred to the Complainant. If you are interested in reading the Decision, you can find it here. 

As it can be noticed, what it could become in a very complex scenario to the Client, as, e.g.: “to whom shall I ask for the domain name? How can I contact the Registrant? What it means the use of a Privacy Service? How do I know if I shall send a Cease & Desist Letter? If so, under which circumstances is recommendable to send it and, if so to which email address?” Or even worst: “the Web Site is -in fact- jeopardizing my business, how can I shut it down?”, plus another very usual multiple questions, found its answers and were transformed through one of most reliable time and cost-efficient mechanism to resolve internet domain name disputes for a .MX, without the need for court litigation at the WIPO Center. In summary, the administrative procedure in addition with our reasonable fees, based on a qualified experience and knowledge, represents a significant contribution to the IP business, especially on the Internet.

It is important to bear in mind, that on this Case, even when the Complainant successfully got the transfer of the domain name <venequip.com.mx>, the infringement story doesn`t end there. Why? In particular, because since October 2013 more than 1,200 new gTLDs, meaning new extensions as .app, .company, .club, .icu (shorthand for “I See You” in English), .site, .store, .tech, .top, .website, .win, .xyz, etc., where launched to the current Domain Name System (DNS), meaning that a relevant number of new strings could become available in the next few years, plus the 252 ccTLDs in existence already. Each ngTLD represents 19.000 new domain names registrations, therefore, don`t you think that an appropriate Trademark Monitoring on the Internet seems to be an essential tool for each Individual, Company and/or IP Law Firms nowadays? In contrary, if a Trademark Owner, is not aware about the ngTLDs, and the multiple Cybersquatting scenarios, it is very easy to be part of the problem and not of the solution for its business and Trademark presence on the Internet.

IPRs On-line in parallel of this type of Cases, considering its extraordinary communicational power and influence, offers the possibility of conducting Trademark-Social Networks Service Monitoring (for IG, FB, TW, YouTube and/or BitTorrent), which for certain Clients, represents the channel of preference for the promotion and distribution of its entire work. Even better, the good news here, is that we can take-down an account in a blink of an eye!