Hogan Lovells acts for Canyon Bicycles in domain-name dispute

Hogan Lovells’ intellectual property team has successfully represented Canyon Bicycles in protecting its rights against the ‘canyon.bike’ domain name.

The case represents the first time the Uniform Domain Name Dispute Resolution Policy (UDRP) has been used to protect intellectual property rights in a new generic top-level domain (gTLD).

To date, domain-name disputes have been filed against domain names ending in the more commonly known .com or .net gTLD. The disputed domain name was registered under a completely new extension, .BIKE.

A unique approach was required in defending the client, whose own trademark, ‘CANYON’, was registered under a top-level domain (TLD) that was descriptive of its goods and services (bikes).

The defendant, a bicycle enthusiast and web designer based in the Netherlands, had registered the ‘canyon.bike’ domain name only seconds after the open launch of .BIKE and was financially gaining from the website by the use of pay-per-clicks. This case presented additional challenges for the team as the domain name was registered under a privacy protection service, so the details of the underlying registrant were unknown.

According to David Taylor, an intellectual property partner based in Paris and head of the International Internet Domain Name practice, this case was a significant victory for Canyon Bicycles and represents a pivotal point in online brand protection strategy.

He added: ‘More than 1,400 new gTLDs such as .BIKE will be launched within the next couple of years, changing the face of the internet as we know it. This case was a historic decision and sets an important precedent as it demonstrates that the UDRP can adapt and evolve and be a strong rights protection mechanism in a rapidly changing world for brand owners.’

The cross-border team at Hogan Lovells succeeded in shutting down the website and transferring the domain name to its rightful owner. Morten Petersenn (partner) and Thorsten Klinger (senior associate), based in Hamburg, manage the global trademark portfolio of Canyon Bicycles and have co-ordinated the case, while Taylor has represented the client before the UDRP panel.

Taylor is also a World Intellectual Property Organisation (WIPO) panellist for the UDRP.