Richard Mille To Secure The Domain In Czechia In Domain ADR

Recently I have had the opportunity to represent Swiss watch manufacturer Richard Mille in a domain dispute against the Czech holder. As a result the domain name <richardmille.cz> was secured and transferred to this well known brand.

Being a watch enthusiast myself, it was really a pleasure to assist this famous brand with the protection of their intellectual property.

Facts Of The Case

The domain name <richardmille.cz> was registered and held by the Czech entity without any actual link to the Swiss manufacturer.

It was parked and was not being used for anything other than ads. A straight forward case of domain speculation and an effort to capitalize on the goodwill of the brand.

Richard Mille has several trademarks covering multiple territories including Czechia, which arguably have a reputation thanks to the quality of its products, marketing and a number of well known ambassadors, such as Ester Ledecká, Mark Cavendish, Mathieu Van Der Poel, Pharrell Williams and Rafael Nadal.

Domain Disputes In Czechia

For domain disputes there is now well established mechanism of ADR, closely following the UDRP (for gTLD). With respect to the Czech ccTLD, claimants may bring the case before the Czech Arbitration Court.

Compared to a regular court proceedings, the domain ADR is faster, cheaper and usually decided without oral hearing.

The domain ADR in Czechia is more or less the same as UDRP, however there are some caveats.

Most notably, in UDRP the claimant must show that (1) it has rights to particular mark (e.g. trademark) to which the domain name is confusingly similar, (2) the domain name holder has no rights nor legitimate interest and (3) the domain name has been registered and is being used in bad faith. In case of the Czech ccTLD, it suffices to show either lack of legitimate interest or the bad faith together with the fact that the claimaint has the right to a particular mark.

It follows that the requirements to successfully claim the case for the Czech ccTLD are more lenient.

However, in clear cut cases such was the dispute over <richardmille.cz>, this nuance does not make that much of a difference as the outcome would likely be the same also under more strict conditions as provided by UDRP.

Trademarks, Trademarks, Trademarks

And what is the main takeaway?

Such domain disputes serve as a reminder that timely trademark registration can save you from an unnecessary headache of proving your rights to your brand.

With a valid trademark in place, clear cut domain disputes are mostly a formality.

However, were it not for the trademark to support the claim in the particular mark, the process of showing that the claimant actually has the rights to the brand can often become quite a nuisance.

Bear that in mind when thinking about what steps to take to secure rights to your brand.