By Claire Kowarsky, Director of HSS IPM, and Daniel Shapiro, SVP, Strategic Partnerships and Brand Relationship at Red Points, together with Cindy Grönberg Moldin, Vice President of Brand at Cotopaxi

Background

Cotopaxi was founded in 2014 as a vehicle to fight extreme poverty by selling sustainably designed outdoor gear. In addition to its designation as an American public benefit corporation (PBC), Cotopaxi operates as a certified B Corporation, reflecting its commitment to sustainable solutions for ending extreme poverty in our lifetimes. To date, Cotopaxi has given over three million dollars to vetted organizations working to increase access to universal education, health care, climate solutions, and meaningful employment in impoverished communities.

Cotopaxi, originating in the United States, boasts international sales distribution channels across the European Union, Canada, United Kingdom, Australia, New Zealand, and Japan, offering quality adventure gear and apparel to customers all over the world. As a direct-to-consumer, retail, and wholesale brand, Cotopaxi serves a broad audience.

Issue
Cybersquatting — the abusive registration of trademarks as domain names — has become a common issue for brands around the world. Fashion is among the industries with the highest number of cybersquatting cases filed in 2021 by trademark owners, as reported by the World Intellectual Property Organization. With the growth of eCommerce, this issue shows no sign of slowing down. However, monitoring and detecting cybersquatted domain names is no easy feat. Bad actors regularly employ endless domain spoofing tactics to mislead consumers into revealing their personal information or purchasing fake goods. When a fraudulent domain name remains unchallenged for too long, it may result in significant financial loss and damage to the targeted brand’s reputation.

Cybersquatting is an issue Cotopaxi experienced first-hand when – utilizing Red Points’ monitoring services – they saw numerous fake websites, which led to a spike in consumer phishing attacks. [CK1]
In collaboration with Red Points, Cotopaxi identified 16 highly provocative domain names that were registered in a single day in February 2023. Almost all of the domain names resolved to copycat websites, claiming to sell Cotopaxi products and targeting consumers in significant territories, including Australia, Belgium, Canada, Greece, Ireland, Japan, New Zealand, Portugal, Switzerland and the United Kingdom.

Approach
While Red Points has an enviable success rate when it comes to taking down impersonation websites, to fully extinguish the threat from the 16 identified domains legal recovery action was recommended in this case. Moreover, Cotopaxi wanted to signal to potential squatters that it was no “easy target”. Red Points connected Cotopaxi with HSS IPM, a firm with expertise and a strong track record in recovering domain names through administrative proceedings.

With HSS IPM’s support, Cotopaxi utilized the UDRP mechanism (Uniform Domain-name Dispute Resolution Policy) before the Czech Arbitration Court (CAC). Despite the 16 domain names purportedly belonging to separate registrants, Cotopaxi submitted evidence and arguments indicating that all 16 domain names were subject to common control, and thus should rightfully be consolidated into a single complaint. In its Complaint, Cotopaxi sought to persuade the Panel that the 16 infringing domain names had been registered and were being used in bad faith by the squatter.

Results
The Panel adjudicating the UDRP Complaint accepted Cotopaxi’s arguments and ruled in favor of transferring all 16 disputed domain names to Cotopaxi. In the published decision, the Panelist noted:

“…The Complainant’s trademark is highly distinctive. Given the Complainant’s market position its trademark is widely known and has a strong reputation;”

And further,

“…the Respondent has provided no evidence whatsoever of any actual or contemplated good faith use of the disputed domain name, nor can the Panel conceive of any such good faith use.”

Shortly after the publication of the favorable decision, Cotopaxi gained control of the infringing domain names and was able to eliminate these active threats to its customers and brand around the world.

From the client
“It’s disheartening to see fraudsters attempting to divert customers from our legitimate websites, particularly because such diversion directly impacts Cotopaxi’s mission to make a positive change in the world by supporting communities experiencing poverty.
To protect our customers, Cotopaxi has developed a robust online enforcement strategy. By initiating and winning this UDRP complaint, we are sending a clear message to would-be infringers that we won’t tolerate such attacks on our brand.”
Cindy Grönberg Moldin, Vice President of Brand, Cotopaxi

About Redpoints

Red Points is the most widely used solution to recover digital revenue. Over 1,200 companies rely on our platform to fight counterfeits, piracy, and impersonation. They leverage Red Points to take back the revenue that’s rightfully theirs. With 300+ professionals and offices in New York, Barcelona, Beijing, and Salt Lake City, Red Points has disrupted an industry traditionally led by service providers with a scalable, cost-effective solution.

About HSS IPM
Founded in Switzerland in 2018, HSS IPM is a new kind of ‘global boutique’ specialist IP firm, helping clients across the world extend their global IP portfolios and recover infringing domain names.