Managing trademarks and domain names is demanding, and even more when the trademark is made up of a generic word (eg: Apple, Caterpillar, Orange). Among the many rules that apply to the management of portfolios of brands and domain names, experts advise registering the domain names in the ccTLDs corresponding to the countries in which the trademark owner operates. For some countries, including China, the registration of certain domain names must be systematic. Otherwise, several nightmarish scenarios can arise. Let us take two examples. First, the domain name can be used by a third party capable of asserting a genuine legitimate interest or constructing a sufficiently convincing speech to suggest that the legitimate interest is real and serious. Second, counterfeiters can use the domain name.
The American company Caterpillar was confronted with a similar situation concerning two domain names: first, caterpillar.中国, identical to the brand “Caterpillar” and, second, 卡特彼勒.中国, identical to the transliteration of the trademark. Caterpillar owns a registered trademark in China as well as the caterpillar.cn domain name. However, the company omitted to register caterpillar.中国 and 卡特彼勒.中国 domain names. The omission is all the more surprising and deplorable as the trademark “Caterpillar” is formed by reference to a generic word, “卡特彼勒” being the mere traduction of “caterpillar”. Therefore, in such a case, with regard to the ccTLDs .CN and. 中国, one can say that the registration of these domain names, in particular, was necessary. Fortunately, Caterpillar obtained the transfer of the domain names following a cnDRP procedure (HKIAC, DCN-2100992, 卡特彼勒 公司 (Caterpillar Inc.) v. 赢 禾 (上海) 重工 机械 有限公司(卡特彼勒. 中国 与 caterpillar. 中国), 2021 年 5 月 18 日). The bad faith of the defendant was patent. Indeed, for example, the defendant indicated that he was ready to transfer the domain names in exchange for a distribution contract. It was certainly not a good way to start a business relationship!
The troubles of the Caterpillar company highlight the need to carry out, on a regular basis, audits of domain name portfolios and, more systematically, monitoring aimed at detecting the occurrence of cybersquatting cases.
