This is the July / August edition of Anchovy News. Here you will find articles concerning ICANN, the domain name industry and the recuperation of domain names across the globe. In this issue we cover:
Domain name industry news, including: Launch of .KIDS, Slow uptake of .AU direct by priority registrants, and EURid slows but grows.
Domain name recuperation news, including: Domino match, If the shoe doesn’t fit… the Panel finds that the UDRP did not apply on the facts, and Exact match between domain name and trade mark leads to Reverse Domain Name Hijacking.
Newsletter sections:
For earlier Anchovy News publications, please visit our Domain Names practice page. Learn more about Anchovy® – Global Domain Name and Internet Governance here.
Regular readers of Anchovy News will know that the DotKids Foundation, the new Registry operating the new generic Top Level Domain (gTLD) .KIDS, announced the delegation of .KIDS to the Internet’s root system by ICANN a few months ago (see our April edition here). The Registry has now started the launch of the new gTLD, which aims to provide children with a dedicated Internet space.
In an announcement dated 11 August 2022, DotKids Foundation states that “.KIDS is the first TLD dedicated to the best interests of kids, so that parents can rest assured that their kids’ safety online is taken to heart”. As such, the .KIDS Registry Policy requires that “registrants refrain from illegal and inappropriate materials to be published through a .kids domain, including content with explicit sexuality, violence, substance abuse, profanity, or other matters typically deemed unsuitable for children or adolescents, as well as content promoting the consumption of tobacco and alcohol by children (…), and child labor, trafficking and child soldier”. Any registrant not complying with the .KIDS Guiding Principles will see their domain name suspended.
The .KIDS launch is happening in several stages, which are set out below:
Again applications will be considered on a first come, first served basis and, as above, this phase will be followed by an objection period (the “Pioneer Domains Objection Period”), which will end on 13 January 2023.
For more information on the launch of .KIDS, please contact David Taylor or Jane Seager.
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As previously reported in Anchovy News, .AU direct names launched on 24 March 2022 with a six-month “Priority Allocation” period for existing holders of Australian third-level domain names; however a slow take up of the registrations has caused some people concern.
By way of a reminder, since 24 March 2022, it has been possible to apply for:
• new .AU direct names that are not already registered in any existing .AU namespace, such as .COM.AU or ORG.AU, provided these comply with the applicable .AU Licensing Rules; and
• the exact match of any existing .AU domain name of which you are the registrant.
These latter domain names are being allocated according to the Australian Registry auDA’s Priority Allocation Process, which takes place over six months and aims to protect existing registrants by giving them exclusive access to the .AU equivalent of their third-level domain name. However, that priority period is coming to an end on 20 September 2022 and any registrant who does not claim their second-level equivalent domain name risks seeing it being snapped up by another registrant.
With around four weeks to go at the time of writing until the extension is opened to the general public, only around 200,000 .AU second-level domain names have been registered, as against the roughly 3.7 million existing third-level Australian domain names. Although there is some overlap among the names, it would seem, based on these figures, that less than 10% of registrants have registered their matching second-level domain name. This relaxed uptake comes in spite of a campaign by auDA to publicise the launch of the .AU direct extension via media releases and microsites such as https://getyour.au/, https://pavlova.au/ and https://stoked.au/.
The Australian Small Business and Family Enterprise Ombudsman, Bruce Billson, has expressed concerns about the launch, stating: “I implore all small business owners to take a few minutes to work out if they want the shortened .au domain or will be unhappy for someone else to have it” adding that: “the last thing anyone needs is someone ripping off their domain name”.
Mr Billson, who had his request to auDA to extend the 20 September deadline rejected, has also asserted that he was “not surprised so few people know about this as the public awareness campaign has been less than impactful, but I want to make sure small businesses avoid a horrible surprise when they find someone else is using or misusing the shortened version of their key digital asset being their domain name”.
To put things into perspective, however, when the United Kingdom’s .UK was launched in June 2014, it provided registrants with a five-year priority period. In spite of this, the number of .UK domain names currently registered stands at only 15% of existing third-level domain names.
The Australian Government’s Australian Cyber Security Centre (ACSC) also issued an Alert regarding the .AU launch, recommending that “all Australian businesses, organisations and individuals consider taking advantage of the priority allocation process to register the .au direct equivalents of their existing domain names” in order to “prevent cybercriminals from registering these domain names in the future and using them for attempted financial fraud”.
In the face of the relatively low numbers of .AU direct domain names thus far, auDA’s CEO, Rosemary Sinclair, remains positive stating that the Registry is “delighted by the strong response to .au direct from priority applicants” noting that there were more than 35,000 .AU registrations made in the first 24 hours of the launch and nearly 80,000 in the first week. It may well be that we will also see a last-minute rush in the final few weeks of the Priority Allocation period as domain name applications make their way from registrants’ to-do lists and into the .AU zone file.
Applicants under the Priority Allocation Process should be mindful of the fact that their third-level domain names should be up to date and meet all the relevant registration requirements, failing which their second-level .AU applications will be rejected. Potential applicants should thus waste no time in reviewing such elements as the status of supporting trade marks and business registrations in order to correct any deficiencies in time to meet the 20 September registration deadline.
Should you be interested in applying for a .AU domain name, please contact David Taylor or Jane Seager.
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EURid, the Registry responsible for managing the .EU country code Top Level Domain (ccTLD) as well as .ею (Cyrillic script) and .ευ (Greek script), recently published its Q2 2022 Progress Report. The Report shows that around 172,040 new .EU domain names have been registered, taking the total number to 3,722,177 at the end of the second quarter.
Although growth continues, it has slowed since last year as there were around 212,230 new .EU domain name registrations at the same point in 2021. There could be a number of reasons for this, but the difficult economic climate and the consequences of Brexit, which resulted in UK residents no longer being allowed to register new .EU domain names from 1 January 2021, are probably front runners.
Similar to last year, Portugal came out on top of the league table showing a 5.1% growth, and the renewal rate for existing domain names remains high at 83.3%. Behind Portugal came Norway (.NO) with a 3.4% growth and Austria (.AT) with 2%.
The report goes by stats published by the Council of European National Top-Level Domain Registries (CENTR) and shows that at the end of quarter 2, the top ten CENTR ccTLDs were as follows:
Germany (.DE): 17 279 663
United Kingdom (.UK): 11 142 560
Netherlands (.NL): 6 250 648
Russia (.RU): 5 015 483
Brazil (.BR): 4 958 776
France (.FR): 3 939 759
European Union (.EU): 3 687 481
Australia (.AU): 3 581 857
Italy (.IT): 3 456 208
Canada (.CA): 3 286 541
The full EURid Q2 2022 report can be found here.
Should you require further information regarding EU domain names, please contact David Taylor or Jane Seager.
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In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel refused to transfer the disputed domain name dominoplc.com, finding that the Complainant had failed to prove that the Respondent had registered and used the Domain Name in bad faith.
The Complainant was Domino Printing Sciences PLC, a company based in the United Kingdom, operating in the printing sector. The Complainant owned several trade marks incorporating the term DOMINO, registered between 1983 and 2014.
The Respondent was Yegara, a web hosting, design and advertising company based in Ethiopia, which managed the Domain Name for the benefit of the Respondent Domino Marketing Solution PLC, also based in Ethiopia.
The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name.
To be successful under the UDRP, a Complainant must satisfy the requirements of paragraph 4(a) of the UDRP, namely that:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Under the first element of paragraph 4(a) of the UDRP, the Panel found that the Complainant had established rights in the DOMINO trade mark, and that the Domain Name incorporated the Complainant’s registered mark in its entirety. The Complainant therefore satisfied 4(a)(i).
The arguments of the Complainant under 4(a)(ii) were set aside by the Panel on the basis that it was not necessary to make a decision on this point, given its findings under 4(a)(iii).
Under paragraph 4(a)(iii) of the UDRP, the Panel held that the Complainant had failed to establish bad faith registration and use by the Respondent. Although the Complainant did have registered trade marks by the time of the Domain Name registration, the Panel found insufficient evidence to conclude, on balance of probabilities, that it was more likely than not that the Respondent had the Complainant’s DOMINO Mark in mind when registering the Domain Name. Given that the DOMINO trade mark was not registered in Ethiopia and the Complainant’s previous sales in Ethiopia were not particularly high, it was not possible for the Panel to conclude that the Respondent was probably aware of the Complainant’s DOMINO trade mark. The nature of the Respondent’s business was also deemed legitimate by the Panel, who noted that the parties were not competitors in any meaningful way. Finally, the Panel noted the Complainant’s assertion that the Respondent’s use of the Domain Name constituted passing off under English law, but underlined that this was not for the Panel to consider under the UDRP. In effect, a successful claim under the UDRP did not necessarily coincide with a passing off or trade mark infringement claim under local law.
Comment
This decision illustrates several points that may be taken into account when filing a complaint to recuperate a domain name that includes a seemingly generic term. It is crucial to submit persuasive evidence of a complainant’s reputation, ideally also in the respondent’s country. This is even more so when, as in the present case, the respondent’s company name contains the relevant term. Establishing bad faith will then be more difficult, but not necessarily impossible, and will require assembling information and data to evidence the respondent’s knowledge of and, more importantly, intention to target the complainant and its rights.
The decision is available here.
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In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of the Domain Name at issue, finding that the case was not suitable for determination under the UDRP. The Panel found that the case was essentially a business dispute involving the insolvency of the Respondent rather than a typical case of cybersquatting of the kind which the UDRP was created to address.
The Complainant was Gido Ltd., a Bulgarian company based in Plovdiv, Bulgaria, which produces fashion retail goods including footwear. The Complainant held an EU word mark for GIROTTI and an EU figurative mark for GIROTTI, registered in August 2014 and November 2015 respectively.
The Respondent Company was Girotti Srl, a company incorporated in Modena, Italy, on 11 October 2016. An entry from the Business Register of Modena dated 20 December 2021 indicated that the sole shareholder of the Respondent Company as of 19 June 2017 was an entity named Girotti Trade Bulgaria EOOD of Plovdiv, Bulgaria. The Panel noted that although this entity did not appear to be the same entity as the Complainant and neither party explained the connection, the fact that the Respondent Company had a Bulgarian entity shareholder suggested that the Parties were linked or had been linked at some point. The Panel also noted that after filing the Complaint (see below), the Complainant made a supplemental filing disclosing a contract between the Complainant and the Respondent which conferred on the Respondent Company the right to use the GIROTTI trade mark to sell products produced by the Complainant only.
The Domain Name girottishoes.com was registered on 9 June 2016 with the registrar GoDaddy.com, LLC. To determine the registrant history, which was not provided by the Parties, the Panel consulted the historic Whois records, as per its general powers set out in paragraphs 10 and 12 of the UDRP Rules (see section 4.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition). The Panel found that the original registrant of the Domain Name was Heat Design, Georgi Anev, of Peshtera, Pazardjik, Bulgaria, which was partnered with the Complainant and acting on the Complainant’s behalf.
The registrant history is complex; the registrant of the Domain Name changed many times between Heat Design Ltd and the Respondent Company from 2016 onwards.
On 15 December 2021, the Court of Moderna, Italy, declared the Respondent Company bankrupt and appointed Vincenzo Cuzzo (the Respondent Receiver) as the insolvency receiver. Shortly afterwards, on 27 December 2021, the Court ordered the “persons who deal with the management of the [disputed domain name]” to allow the Respondent Receiver to manage the assets of the Respondent Company.
Although the exact dates are not clear, as part of its independent research, the Panel found that at some point between 22 October 2021 and 16 January 2022 the registrant of the Domain Name changed from the Respondent Company to Heat Design Ltd. Next, the Panel found that the Respondent Receiver provided the Registrar with a copy of a court order on 2 March 2022 (which the Panel presumed was the order issued by the Court of Modena in December 2021) and required that the Registrar transfer the Domain Name to the Respondent Company.
By 6 March 2022, the identity of the registrant of the Domain Name was concealed behind the Registrar’s privacy service. On 25 March 2022, the Respondent Company was listed in the Domain Name registrant organization field and the Respondent Receiver was listed in the registrant name field, i.e. the Registrar had complied with the court order.
The Complainant filed the Complaint under the UDRP on 11 March 2022, alleging that it had authorised its partner, Heat Design Ltd, to register the Domain Name on its behalf and that the Respondent Company subsequently took the Domain Name illegally.
To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements:
(a) The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(b) The respondent has no rights or legitimate interests in respect of the domain name; and
(c) The domain name has been registered and is being used in bad faith.
The Complainant argued that (i) it was the owner of the GIROTTI trade mark which it used to sell shoes under the GIROTTI brand and that the Domain Name was registered two years after the trade mark registrations, (ii) that the Domain Name was initially registered by Heat Design Ltd, its partner, on its behalf and with its permission but was subsequently taken by the Respondent illegally and (iii) that the Respondent was selling the Domain Name at auction to competitors who would use it misleadingly to sell shoes under the GIROTTI brand.
The Respondent Company argued in the first instance that the Complaint was filed against the Respondent Receiver personally rather than the Respondent Company as holder of the Domain Name and so should be dismissed. The Respondent Company also argued that the Complainant did not satisfy the second and third elements because the Respondent Company did have rights or legitimate interests in the Domain Name; it had been using the trade name “Girotti” to sell shoes in Italy since it was incorporated in 2016 and provided extensive evidence, including sample invoices. The Respondent Company argued that it therefore had a legitimate trade name right and had acquired goodwill. In relation to the third element, the Respondent Company argued that there was no evidence that the Domain Name was registered and used in bad faith or that the Domain Name was being sold at auction. The Respondent Company also argued that none of the circumstances in paragraph 4(b) of the UDRP applied to the Respondent Company’s registration or use of the Domain Name.
The Panel ultimately found that on the basis of the facts, this case was not suitable for a determination under the UDRP because this was essentially a business dispute involving the insolvency of a corporate entity rather than a case of cybersquatting of the kind that the UDRP was created to address. The Panel noted that a court ordered the transfer of the Domain Name into the name of the Respondent Company and the Registrar had implemented that order, removing the Domain Name from the Complainant’s control. The Panel found that the dispute between the Parties, which involved the interaction between the Complainant’s intellectual property rights and the Respondent Company’s insolvency, would be more appropriately resolved in the courts, whether that be the Court of Modena or an alternative forum.
The Panel was mindful of the decision of a panel in The Thread.com, LLC v Jeffrey S. Poploff, WIPO Case No. D2000-1470, noting that panels under the UDRP are not a general domain name court and the UDRP is not designed to adjudicate all disputes of any kind that relate in any way to domain names.
For completeness, the Panel gave a brief indication of how it would have decided the case if it had considered the case on the merits; it would have denied the Complaint on the basis of the second element assessment because the Panel found that the Respondent Company had successfully established that at present it had rights and legitimate interests in the Domain Name arising from the insolvency order of the Court of Modena.
The Panel also considered whether the effect of other pending legal proceedings would have prevented it from proceeding to a decision under the UDRP and found that this was not the case. The Domain Name was not the subject of other pending legal proceedings because the proceedings at issue were insolvency proceedings. Even if that were not the case, the Panel noted that it had discretion to suspend, terminate or continue a proceeding under the UDRP where a domain name dispute that was the subject of a complaint was also the subject of other pending legal proceedings, as per paragraph 18(a) of the UDRP Rules.
Comment
This decision underlines that a panel under the UDRP is not a general domain name court and that the UDRP is narrowly crafted to apply to a particular type of abusive registration arising from cybersquatting where the respondent does not have any rights or legitimate interests in the disputed domain name and the domain name has been registered and used by the respondent in bad faith. If you would like advice on whether the UDRP applies to your domain name dispute, please contact David Taylor or Jane Seager.
The decision is available here.
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In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a UDRP panel denied a UDRP Complaint for the disputed domain name goodlife.com, entering a finding that the Complainant had engaged in Reverse Domain Name Hijacking (RDNH).
The Complainant, GL Concepts, LLC d/b/a Goodlife, was a United States company, and was listed as the owner of United States Trademark Registration No. 4750312, GOODLIFE, registered on 9 June 2015 for goods in International Class 25, including shirts, t-shirts, tank tops, sweatshirts, pants, shorts, and hats.
The disputed domain name was registered on 24 September 1998. The disputed domain name did not resolve to an active website.
The Complainant asserted rights in the GOODLIFE trade mark, and submitted that the disputed domain name was identical to the trade mark. The Complainant argued that the Respondent had no rights or legitimate interests in respect of the disputed domain name, noting that the Respondent had never made active use of the disputed domain name, which had only ever resolved to a landing page. The Complainant asserted that the Respondent was using the disputed domain name in order to mislead or divert customers for commercial gain by holding the unused disputed domain name "hostage for an exorbitant price tag." The Complainant submitted that the disputed domain name was registered and was being used in bad faith. According to the Complainant, the Respondent had failed to use the disputed domain name for any legitimate purpose, and had demanded significant costs from the Complainant in reply to the Complainant’s request to acquire the disputed domain name. The Complainant pointed to this as underscoring the Respondent’s lack of good faith at the time that the disputed domain name was registered, as well as throughout the disputed domain name’s subsequent renewal. The Complainant further alleged that the Respondent held the disputed domain name in order to prevent the Complainant from reflecting its GOODLIFE trade mark in a corresponding domain name.
The Respondent did not come forward to submit a Response to the Complaint
To be successful under the UDRP, a complainant must satisfy the requirements of paragraph 4(a) of the UDRP:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Under paragraph 4(a)(i) of the UDRP, the Panel found the disputed domain name to be identical to the Complainant’s GOODLIFE trade mark. Under this element of the UDRP, the Panel observed that for purposes of the first element, there was no mention to the date on which the trade mark holder acquired its rights, only that such rights had to be in existence at the time that the Complaint was filed, and that the fact that a domain name may have been registered before the complainant acquired trade mark rights did not preclude a complainant’s standing to file a UDRP Complaint, nor did it preclude a finding of confusing similarity.
Noting that the Complaint would go on to fail under the third element, the Panel did not consider it necessary to address the issue of whether the Respondent had rights or legitimate interests in respect of the disputed domain name for purposes of paragraph 4(a)(ii) of the UDRP.
Under paragraph 4(a)(iii) of the UDRP, the Panel observed that the disputed domain name had been registered some 17 years prior to the Complainant’s registration of the GOODLIFE trade mark, and that the disputed domain name was composed of the dictionary terms "good" and "life", which may be used in combination for a variety of legitimate uses unrelated to the Complainant or its trade mark. The Panel further noted that the Complainant had made no attempt to provide evidence of its use of the GOODLIFE trade mark dating back to 1999, the claimed first use in commerce for the mark, nor did the Complainant claim to have existed in 1998 when the disputed domain name was registered, nor was there any evidence whatsoever of the Respondent having targeted the Complainant in any way through the disputed domain name. The Panel found that the Complainant had failed to explain how the Respondent could have registered the disputed domain name in bad faith, and noted that the Complainant had provided no evidence of the Respondent attempting to sell the disputed domain name at an elevated price, as claimed by the Complainant. In the circumstances, the Panel found that it was not possible for the Respondent to have known of the Complainant at the time that the disputed domain name was registered, and that the Complainant had failed to establish that the disputed domain name was registered in bad faith. The Panel did not consider it necessary to determine whether the disputed domain name had been used in bad faith.
In entering a finding of RDNH, the Panel observed that the Complainant, who was represented by counsel, should have taken into account that the Respondent had been the owner of the disputed domain name for a substantial period prior to the Complainant’s registration of its GOODLIFE trade mark, and for nearly a year before the Complainant’s claimed first use in commerce of the mark. In the circumstances, the Complainant ought to have followed established UDRP precedent that where a domain name is registered prior to the accrual of a complainant’s trade mark rights, panels will not normally find bad faith on the part of the respondent. In the present case, the Complainant should have appreciated its lack of supporting evidence that the Respondent registered and used the disputed domain name in a way that targeted the Complainant, and that it would therefore not be able to prevail under the third element of the UDRP.
Comment
The above case falls into the rare class of cases where, despite the complainant having a trade mark that is an exact match with the disputed domain name, the case results in a denial. Noting that it is incumbent on a complainant to prove all three elements of the UDRP, and in line with well-established UDRP precedent, where a complainant is unable to produce evidence of its existence at the time that a disputed domain name was registered, such a complaint will almost universally result in a denial, even where a complainant holds an identical trade mark at the time of filing of the Complaint. Indeed, failure to ignore such well-established principles laid down over a substantial body of UDRP cases will, more often than not, lead to a finding of RDNH.
The full decision is available here.
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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.
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