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Nov '23

Domain Name News: October 2023 – Lexology

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This is the October 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: The .BOTs are coming / Paraguay now supports IDNs / Nominet becomes EBERO for .DESI.
Domain name recuperation news: Respondent’s activity defeats .AU DRP / UDRP: The pivotal role of substantial evidence /Targeting essential for transfer under UDRP.
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.
Domain name industry news
The .BOTs are coming
Pursuant to a Sunrise period that started back in May 2017, followed by two phases of a Limited Registration Period that spanned from October 2017 to February 2023, the .BOT domain name extension, which is primarily aimed at registrants that develop or utilise “bots” (i.e. software such as “chatbots” and bulk messaging applications that carry out automated tasks on the Internet), will be made available to the general public with no eligibility requirements on 30 October 2023.
The .BOT rollout commenced with a Sunrise Period that was open to registrants with a matching trade mark registered with the Trademark Clearing House (TMCH) and which ran from 31 May to 14 July 2017. This was followed by a first Limited Registration Period that ran from 31 October to 1 December 2017 that was open to “entities that provide tools, development frameworks, analytics, marketing and/or other services for bot developers”. A second Limited Registration Period ran from 5 December 2017 to 23 February 2023 and this was open to registrants who owned, operated, or managed bots built using certain specified “botkits” on a first come, first served basis.
It has recently been announced that the General Availability Period will begin on 30 October 2023. The Registry stated that it has “reduced the friction” for .BOT registration and that whereas previously “custom technical integration was required for registrars and bot validation was required for registrants. Both have since been removed to allow for a streamlined onboarding and registration experience”.
Brand owners should therefore be aware that the TLD is now open to all comers and should seek to protect their brands, if they have not already done so during the earlier registration periods.
Should you require any further information, or wish to register in .BOT, please contact David Taylor or Jane Seager.
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Paraguay now supports IDNs
NIC.PY, the Registry responsible for running the .PY country code Top Level Domain (ccTLD) for Paraguay, has recently allowed the registration of Internationalised Domain Names (IDNs).
IDNs are domain names that consist of native language, non-ASCII characters; for example, those with diacritics like á, ü, ñ, or Chinese characters like 飛. Registering IDNs is already possible under a number of ccTLDs such as Brazil (.BR), China (.CN), Hong Kong (.HK), France (.FR), Germany (.DE), Spain (.ES) or Tuvalu (.TV), and in most generic Top Level Domains (gTLDs).
Domain name registrations in Paraguay are available at the second level, under extensions such as .COM.PY, .NET.PY or .ORG.PY.
NIC.PY is now allowing the registration of domain names containing the following accented characters: á, é, í, ó, ú, ü.
The launch of IDNs under .PY is taking place in two phases:
This phase is reserved to the registrants of existing .PY domain names registered before 1 July 2023.
The IDN that is applied for must have a direct correspondence to the existing .PY domain name. For example, if a registrant holds the domain name dia.com.py, then they can apply for día.com.py.
As from 1 January 2024, anybody will have the right to apply for any available IDN.
For more information on the registration of IDNs under .PY, please contact David Taylor or Jane Seager.
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Nominet becomes EBERO for .DESI
Nominet, the Registry responsible for running the .UK country code Top Level Domain (ccTLD), has, as of 19 October 2023, been confirmed by the Internet Corporation for Assigned Names and Numbers (ICANN) as the Emergency Back-End Registry Operator (EBERO) provider for the .DESI generic Top Level Domain (gTLD).
On 1 May 2023, Desi Networks LLC notified ICANN of its intent to terminate the .DESI Registry Agreement entered into on 14 November 2013. ICANN subsequently placed the .DESI gTLD into the EBERO program.
An EBERO provider is activated, on a temporary basis, where a gTLD operator, such as Desi Networks LLC, is at risk or is unable to maintain any of the following “five critical registry functions”:
1. DNS resolution for registered domain names
2. Operation of Shared Registration System
3. Operation of Registration Data Directory Services
4. Registry data escrow deposits
5. Maintenance of a properly signed zone in accordance with DNSSEC requirements
By ensuring the availability of these functions, ICANN and EBERO providers aim to protect registrants and provide an added “layer of protection to the Domain Name System (DNS), and industry ecosystem.” However, EBERO providers are unable to provide any additional services that the gTLD operator may have offered its customers, such as web hosting or network analytics.
The three currently contracted organisations that are designated by ICANN as EBERO providers because they “meet stringent technical requirements and have demonstrated years of experience in operating domain name services, registration data directory services and extensible provisioning protocol services” are as follows:
• Canadian Internet Registration Authority (CIRA)
• China Internet Network Information Center (CNNIC)
• Nominet
Nominet has been running the .UK domain name space since 1996. Along with .DESI, Nominet is also the EBERO for the .WED gTLD.
Eleanor Bradley, Managing Director of Registry and Social Impact at Nominet has said: “While it is sad to see a Registry business facing challenges, we are pleased Nominet is trusted at moments like this to step in to ensure the impact on registrants and registrars is minimised. We’ll be working hard over the next few days to ensure that is the case.”
For more information, please contact David Taylor or Jane Seager.
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Domain name recuperation news
Respondent’s activity defeats .AU DRP
In a recent decision under the .AU Domain Name Dispute Resolution Policy (.au DRP) before the World Intellectual Property Organization (WIPO), a Panel refused to order the transfer of six domain names that comprised the Complainant's trade mark (or a slight variation of it), principally because the Complainant failed to demonstrate that the Respondent lacked rights or legitimate interests in the Domain Names. .AU is the country-code Top Level Domain (ccTLD) for Australia.
The Complainant was Frankie Shop LLC, United States of America, an online fashion clothing retailer. The Complainant was the owner of several trade marks in the term THE FRANKIE SHOP, including an International trade mark designating Australia, which was registered on 12 October 2021.
The Respondent was Farrugia Global Enterprises Pty Ltd, a company based in Australia.
The Domain Names were frankieshop.au, frankiesshop.com.au, frankieshop.net.au, frankiesshop.au, frankiesshop.com.au and frankiesshop.net.au, all registered on 22 June 2023.
At the time the Complaint was filed, the Domain Names were all resolving to the same registrar parking page, containing sponsored links and a “Get this Domain” link.
To be successful in a complaint under the .au DRP, a complainant must satisfy the following three requirements under paragraph 4(a):
(i) the domain name registered by the respondent is identical or confusingly similar to a name, a trade mark or service mark in which the complainant has rights; and
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered or subsequently used in bad faith.
As far as the first limb was concerned, the Panel agreed with the Complainant, considering that the Domain Names consisted of the dominant feature of the Complainant's FRANKIE SHOP trade mark, namely the words “frankie shop” or “frankies shop” (with “frankie” in the plural). The Domain Names were therefore confusingly similar to the Complainant's trade mark and the Complainant satisfied the first element set out in paragraph 4(a)(i) of the .au DRP.
Turning to the second requirement, and the Respondent's rights or legitimate interests (or lack of them), a complainant must prove that a respondent has no rights or legitimate interests in respect of the domain name in question. A complainant is normally required to make out a prima facie case and it is for the respondent to demonstrate otherwise. If the respondent fails to do so, then the complainant is deemed to satisfy paragraph 4(a)(ii) of the .au DRP.
Paragraph 4(c) of the .au DRP lists three non-exhaustive examples of ways in which a respondent may establish rights or legitimate interests in a domain name, as follows:
(i) before any notice to you of the subject of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, the trademark or service mark at issue.
In the case at hand, the Complainant contended that its trade mark had a global reputation and submitted articles in both English and French to describe the growth of its business and evidencing that it had been operating online since 2016. However, the Panel noted that the Complainant did not adduce any evidence relating to (i) the Complainant’s sales of goods under the Complainant’s trade mark in Australia, (ii) any advertising / marketing initiatives under the Complainant’s trade mark targeting Australian customers or (iii) the Complainant’s trade mark reputation within the Australian market.
Noting that the Respondent had not filed any submissions, the Panel conducted a brief search using publicly available sources on the Internet and found that:
i. the Respondent was an Australian Private Company, registered since December 2018 and located in New South Wales;
ii. the Respondent had been operating under the registered business name FRANKIES AUTO ELECTRICS since December 2018; and
iii. the Respondent promoted its business activities on its website available at www.frankiesautoelectronics.com.au, referring to two locations in New South Wales.
The Panel further added that all Domain Names listed “Frank Farrugia” as the registrant contact, whose surname matched the Respondent’s name and whose first name matched that found in the construction of the Domain Names (i.e., “frankie”). In addition, all of the Domain Names consisted of the terms “frankies shop” or a version of the same. The Panel noted that the Domain Names were registered only a few months before the Complaint was filed and resolved to the same parking page containing sponsored links, not to fashion or clothing retail websites or referring to the Complainant, but to websites under the dictionary term “shop”. Under the circumstances, the Panel was of the view that the Respondent had rights or legitimate interests in the Domain Names through its operations under the business name FRANKIES AUTO ELECTRICS in Australia since 2018.
In light of this finding, the Panel did not need to consider the issue of bad faith registration or use. Nevertheless it went on to find that the Domain Names had not been registered or used in bad faith as there was no indication that the Respondent had targeted the Complainant or its trade mark when registering or using the Domain Names.
Comment
This decision underlines that brand owners should investigate public sources of information about a domain name registrant as much as possible before filing a complaint to ensure that they are fully aware of the registrant’s background. If a registrant has been legitimately trading under a name that is identical or similar to a complainant’s trade mark, but such use appears to be merely coincidental in nature and there is no evidence that the registrant deliberately chose the domain name(s) in order to target the complainant and profit from its reputation, then a complaint under the .au DRP will generally fail. This also applies to complaints filed under the Uniform Domain Name Dispute Resolution Policy applying to generic Top Level Domains such as .COM.
The decision is available here.
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UDRP: The pivotal role of substantial evidence
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (the UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a Panel refused to order the transfer of the disputed domain name aitch.com because the Complainant failed to provide sufficient evidence that the domain name was registered and used for the specific purpose of targeting the Complainant.
The Complainant was Aitch Group Limited, a property developer in London. The Complainant owned a European Union trade mark registration for "AITCH", registered in September 2014.
The Respondent was an individual with an address in the Czech Republic.
The Respondent registered the disputed domain name, aitch.com, in November 2000. At the time of filing of the Complaint, the disputed domain name diverted to a parking page on the BrandBucket website that listed the domain name for sale for USD 31,820 or for lease for USD 2,918 per month. The listing stated "A short, technical name with a nod to ‘AI’ that feels totally neat in any industry. Possible uses: A virtual reality company. An animation studio. An app developer. An arcade. A trade show." Before filing the Complaint, a representative of the Complainant and BrandBucket had engaged in sporadic email negotiations over an eight-year period regarding the purchase of the disputed domain name, yet no deal was reached.
To be successful in a complaint under the UDRP, a complainant must satisfy each of the following three requirements under paragraph 4(a):
(i) 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
(ii) the respondent has no rights or legitimate interests in respect of the domain name; and
(iii) the domain name has been registered and is being used in bad faith.
The Complainant argued that it satisfied each of the requirements and in particular contended in respect of bad faith that the domain name was registered or acquired primarily for the purpose of selling, or otherwise transferring the domain name registration to the Complainant for valuable consideration in excess of the Respondent’s out-of-pocket costs directly related to the domain name. The Complaint did not provide any evidence as to when the Complainant was founded, when the Complainant first started to use the AITCH trade mark or the reputation of the Complainant or the AITCH trade mark.
In response, the Respondent argued that "Aitch" was a common noun used by several companies and expected to continue to be used by many more companies in the future. Additionally, the Respondent highlighted that the disputed domain name held substantial digital value and that the Complainant, in making an offer to purchase the domain name, was fully aware of its value.
After the Panel had been appointed, the Complainant filed an unsolicited supplemental filing that rebutted the Respondent's response. In particular, the supplemental filing asserted that the Complainant had been trading as "Aitch" since 1996, but lacked supporting evidence. Ultimately, the Panel determined that the Complainant failed to demonstrate or address any exceptional circumstances warranting consideration of the supplemental filing. Even if the supplemental filing were to be admitted, the Panel concluded that it would not impact its analysis of the third element of the case.
With regard to the first element, the Panel found that the Complainant had successfully demonstrated rights concerning a trade mark or service mark in accordance with the UDRP and that given that the entire trade mark was replicated within the disputed domain name, the Complainant had satisfied the first requirement under the UDRP.
In light of its decision under the third element of the UDRP, the Panel did not comment on the second element.
In evaluating the third element, the Panel considered whether the Respondent had registered and was using the disputed domain name in bad faith. Ultimately, the Panel found no bad faith registration, as the Complainant's assertion that the disputed domain name was registered primarily for the purpose of selling it to the Complainant was unsubstantiated by evidence. Nor had the Complainant produced any evidence of it having accrued common law rights in the AITCH trade mark or indeed any rationale as to why the Respondent would have likely been aware of the Complainant at the time of registration. The Panel found that adducing such evidence was crucial to the case given that the Complainant's trade mark registration was obtained after the Respondent's registration of the disputed domain name.
Similarly, the Panel found no evidence of bad faith use by the Respondent, as the Complainant did not provide any evidence that the Respondent had targeted the Complainant during the 22‑year period between the registration of the disputed domain name and the filing of the Complaint.
The Panel noted that the fact that the disputed domain name was listed for sale for approximately USD 30,000 was not, in itself, conclusive evidence of bad faith. Indeed, the Panel went further and, while acknowledging that it was beyond a panel's remit to determine the fair value of domain names, commented that the price did not seem outrageous, taking into account factors including the length of the domain name (5 letters), the presence of the term "ai" and the duration of the Respondent's ownership.
The Respondent requested a finding of Reverse Domain Name Hijacking (RDNH), but the Panel opted not to make such a determination, noting that the Respondent had not presented any evidence that the Complainant had brought this case to harass the Respondent or as an abuse of process. Instead, the Panel underlined that use of the Policy should be limited to cases that were thoroughly substantiated and took account of relevant and freely-available jurisprudence.
Comment
This case provides an insight into how UDRP cases may be unsuccessful as a result of lack of evidence, in particular in this case regarding the Complainant’s reputation and common law rights in the "AITCH" trade mark before the registration of the disputed domain name. The Panel's caution against filing cases without sufficient evidence serves as a reminder that UDRP complaints should be thoroughly substantiated and not contain bare assertions.
The decision is available here.
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Targeting essential for transfer under UDRP
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (the UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of the Domain Name at issue, finding that the Complainant had failed to prove bad faith registration and use on the part of the Respondent.
The Complainant was Laboratoire Terravita, a French producer of food supplements. The Complainant held an International Trade Mark Registration for TERRAVITA designating Switzerland and registered in March 2021.
The disputed Domain Name was terravita.shop. The Domain Name was registered in June 2023 by an individual based in Switzerland. The Domain Name resolved to a Shopify parking page.
The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name relying on the passive holding doctrine. The Respondent did not submit a Response.
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.
On the first element, the Panel briefly stated that the Domain Name was identical to the Complainant's TERRAVITA trade mark, which satisfied the requirements of paragraph 4(a)(i) of the Policy. The Panel did not address the second element, finding that this was not necessary given its ruling on the third element.
Regarding bad faith registration and use, the Panel noted that the factors that panels typically consider under the doctrine of passive holding are set out in section 3.3 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, namely:
(i) the degree of distinctiveness or reputation of the complainant’s mark;
(ii) the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use;
(iii) the respondent’s concealing its identity or use of false contact details (noted to be in breach of its registration agreement); and
(iv) the implausibility of any good faith use to which the domain name may be put.
The Panel noted that in this case factor (ii) was the only factor in the Complainant’s favour, and the rest were not, with factor (iii) not being applicable.
The Panel conducted its own online research (permitted under the UDRP in relation to information from public sources) for the sign "TERRAVITA" and found that a number of third parties were using it, even within the Complainant's food supplement industry. Such use was found globally, but also more specifically in Switzerland where the Respondent was based. The Panel also found that the Complainant was not included in the first pages of search results, regardless of whether such search was restricted to Switzerland. In addition, the Panel searched European trade mark registries and found several trade mark registrations comprising the sign "TERRAVITA".
The Panel underlined that the Domain Name resolved to a parking page which did not appear to target the Complainant or its users in any way (none of the Complainant’s branding had been adopted, for example). The Panel further found that no mail exchange (MX) records were configured for the Domain Name which excluded potential use to send fraudulent emails. Finally and interestingly, the Panel did not discard the possibility that the Domain Name had been registered to target an existing third party using the sign "TERRAVITA", but underlined that targeting of the Complainant needed to be established and this was not the case.
Comment
This decision underlines the difficulties of establishing bad faith in a passive holding case where targeting evidence is scarce. In such a case, registrants need to be very cautious when filing a UDRP complaint and must not rely solely on an unanswered cease and desist letter or notice. Establishing the distinctiveness and reputation of the trade mark upon which the complaint is based will be critical. This is especially true for small companies without a global presence and even more so where the trade mark at hand comprises terms widely used by third parties in the same line of business. In addition, this decision serves as a reminder that panelists have the power to conduct basic online searches on information in the public domain and many will do so if they deem that the evidence provided is insufficient.
The decision is available here.
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Joker
Joker

Joker has been buying and selling domains since the late 90's. He has worked with many portfolios and investors over the past decade as well.

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