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ARTICLE · 25 SEPTEMBER 2017

Trademark Rights Vs. Domain

The phenomenon of domain grabbing - the registering of, trafficking in, or use of a domain name in bad faith with intent to profit from a trade mark belonging to another - has resulted in a solid bank ...

United KingdomIntellectual Property

The phenomenon of domain grabbing - the registering of, trafficking in, or use of a domain name in bad faith with intent to profit from a trade mark belonging to another - has resulted in a solid bank of case law and the development of various procedures and mechanisms, whereby trade mark owners can seek to protect and enforce their IP rights.

The recent case regarding the domain name "fcbarcelona.soccer" is a perfect example of how the use of well-known trade marks in domain names by parties other than the trade mark owner, is assessed.

In that case, the WIPO (World Intellectual Property Organisation) Arbitration and Mediation Center, with whom the Complaint was filed, decided that the disputed domain name "fcbarcelona.soccer" had to be transferred to the famous soccer club, because the domain name was registered and being used by the registrant in bad faith. In support of its Complaint, the soccer club submitted details of its substantial portfolio of registered

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