This US software developing company, which offers cyber security solutions, data protection, antivirus and cloud safety hired us to recover the domain registered by a third party which reproduces ts corporate name as well as its house brand.
Before undertaking the ad hoc procedure for this type of cases, we undertook the task of investigating the person who had registered the domain name. The investigation revealed that this person had more than one hundred domain names registered to his name. All of them were reproductions of trademarks of other companies, and variations of those trademarks, to which he added an additional vowel or consonant. In order to strengthen our case we submitted, together with our complaint, a list which included all of the domain names registered in that person’s name, accompanied by certified copies of the Certificates of Registration of the Trademarks reproduced in those domain names, whereby we corroborated that the person who registered the domain name trendmicro.com.mx was acting in bad faith.
We submitted the application contemplated in the “Policy for the solution of domain name disputes for .MX” (LDRP), and transmitted a copy to the owner of the domain name. WIPO received and gave course to the application. The holder of the domain name was notified; the expert was appointed and given the period prescribed by law to issue his finding.
The expert felt that the conditions required to transfer the trendmicro.com.mx domain name from its holder to our client had been met – specifically, that the domain name had been registered in bad faith, for which reason he ordered that the name be transferred to our client. From beginning to end, this procedure took less than three months.
The office action issued in this case has been cited as a precedent in many other cases in which the transfer of a domain name to plaintiff was ordered.