Anchovy News, April 2022 | Hogan Lovells - JDSupra - JD Supra

Hogan Lovells
[co-author: Laëtitia Arrault, Sean Kelly, Cindy Mikul, and Tony Vitali]
This is the April 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: .AU direct launched / .KIDS set to launch at the end of 2022 / Launch of .CHANNEL / Update on Ukrainian domain names.
Domain name recuperation news, including: Proof of targeting essential for acronym trade marks / It all boils down to evidence / Respondent’s business model .sucks.
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.
auDA, the body that runs the Australian domain name Registry, has recently launched .AU direct domain name registrations. Current holders of Australian second-level domain names have priority, under the Priority Allocation Process, to apply for the corresponding domain names directly under .AU until 20 September 2022, at which point all names matching existing domain names registered in other extensions will be released for registration by any registrant with a valid Australian presence.
What’s happening?
.AU direct names launched on 24 March 2022. As of that date it has been possible to apply for:
These names will be allocated according to the Priority Allocation Process.
Eligibility to register
Under Clause 2.4.3 of the .AU Licensing Rules, the applicant for a licence in the .AU direct namespace must have an Australian presence. Under the eligibility and allocation requirements, Australian presence includes the following, among others:
Registering the exact match of an existing .AU domain name under the Priority Allocation Process
If you already hold a .AU domain name under another extension (.COM.AU, .NET.AU, .ORG.AU, .ASN.AU, .ID.AU, .GOV.AU and EDU.AU), you have six months from 24 March until 20 September 2022 to apply for its exact .AU direct match. The six-month period is known as the Priority Application Period and the rules for same are set out in the .AU direct Direct Priority Implementation rules.
Exact match names will be put on Priority Hold by the Registry for the Priority Application Period to prevent them from being registered by other parties and to allow existing registrants to have the first option on registering the exact match of their existing domain names.
If there are no other applicants (or potential applicants), the applicant for a matching .AU direct domain name will be able to use the domain name shortly after applying for it. If, however, more than one registrant holds a licence for the same term in a different extension, all such registrants are eligible to apply for the corresponding .AU direct domain name. These are known as Contested Names and will be allocated in line with the Priority Allocation Process, according to the following Priority Categories, which depend upon the registration date of the domain name:
Priority Category 1: domain names created on or before the cut-off date of 4 February 2018
Priority Category 2: domain names created after the cut-off date of 4 February 2018
The Priority Category of an individual domain name can be checked via the Registry’s priority status tool.
How do the priority categories determine who is allocated a contested .AU direct name?
Where there are multiple applications for a Contested Name, the following principles apply:
Negotiation between multiple Category 1 applicants:
Where an agreement is reached:
Where no agreement is reached:
Applicants will need to renew their applications on a yearly basis.
When are Contested Names allocated?
A Contested Name is allocated once the contention is resolved. This will vary depending on:
If there are no applications for a reserved .AU direct from an eligible registrant name during the six-month Priority Allocation Period, that name will become available to the public on a first-come, first-served basis at the close of the Priority Allocation Period on 20 September 2022.
What the future holds
Upon expiry of the Priority Allocation Period on 20 September 2022, all terms previously registered under a second level .AU extension will be opened up for registration by any registrant that meets the Australian presence requirements with no additional need for the domain name to match either a business name, trade mark or any other element. This will give Australian registrants an advantage over foreign registrants, who will still need to rely on an Australian trade mark application or registration exactly matching the words which are the subject of the Australian Trade Mark in order to fulfil the Australian presence requirement if they do not have a subsidiary in the country.
Further, Clause 2.2 and subsections of the .AU Licensing Rules explicitly prohibit the use of trustees or proxy registration by agents or registrars for Australian domain names, so this is not an option for a foreign registrant. For this reason, we would advise registrants of existing Australian domain names to secure their brands under .AU direct well in advance of the 20 September cut-off date.
Should you wish to register any of your existing .AU domain name registrations directly under .AU, please contact David Taylor or Jane Seager.
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It has recently been announced that the new generic Top Level Domain (gTLD) .KIDS will be launched by the end of 2022.
The DotKids Foundation, a not-for-profit organisation based in Hong Kong, is the new Registry responsible for the .KIDS namespace and it announced that the delegation of .KIDS to the Internet’s root system by ICANN took place on 4 April 2022, which was Children’s Day in Hong Kong.
The proposal for .KIDS originated in 2012 and was supported by various groups, including Child Rights Coalition Asia, Child Welfare League of America, Children’s Lobby Switzerland, and the Association for Childhood Education. The .KIDS TLD is targeting sectors, organisations and businesses devoted to children and “with kids’ best interest at heart“, including children, parents, educators and child advocate groups. Jennifer Chung, Secretary General of DotKids Foundation stated that “.KIDS is a domain extension for the future generations now” and a “global platform for kids communities worldwide”. She added that “whether you are starting a children’s charity project, or a startup launching a kids’ learning app, or a mom starting a parenting blog, .kids domain is a top choice.
The DotKids Foundation has adopted the United Nation’s Convention on the Rights of the Child (UNCRC) as its “guiding principle for operations”. It is, according to DotKids Foundation, under these principles, and with the help of child advocacy partners, that “a set of guidelines are being operationalized to form a protection system to curb inappropriate material for children on .kids domains”. With this in mind the DotKids Principles are as follows:
The .KIDS TLD is set to be launched according to the following schedule and will be supported by DotAsia Organisation, the Registry responsible for the .ASIA domain extension:
Registrations will be open to trade mark holders, children’s rights groups and there will be a “Pioneer Program” for early adopters.
Registrations will be open to the wider market on a first come, first served basis.
Edmon Chung, CEO of DotAsia Organisation, has been quoted as saying that DotAsia “will continue to fully support the launch and operation of .kids for the global children’s rights and welfare community” and that “the DotAsia team will directly engage in working with registrar partners around the world to promote and develop the .kids domain.”
To visit the .KIDS Registry please click here.
For more information on the launch of .KIDS, please contact David Taylor or Jane Seager
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Another new generic Top Level Domain (gTLD) is launching in a few days: .CHANNEL, which is operated by Charleston Road Registry Inc., a wholly-owned subsidiary of Google Registry. Google Registry runs a number of other gTLDs such as .PAGE, .DEV and .APP, to name the top three in terms of number of domain name registrations.
The .CHANNEL new gTLD was delegated in September 2014 but Google Registry had not launched it until now. At first it intended to operate .CHANNEL as a closed gTLD, available to Google only and whose sole purpose was initially to “host select YouTube channels’ digital content” (as set out in its new gTLD application), however Google seems to have somewhat different plans for it.
.CHANNEL domain names are now intended for creators and publishers to monetise their content, by directing their audience to online storefronts. .CHANNEL is thus a restricted gTLD and applicants need to comply with two main requirements:
The launch schedule is as follows:
It should be noted that applicants who registered their .CHANNEL domain names during the Sunrise Period will not be required to comply with the Registry usage requirements, at least not for the duration of the Sunrise and the Limited Registration Phase. More information will be provided by the Registry at a later stage.
For more information on the launch of .CHANNEL, please contact David Taylor or Jane Seager.
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Hostmaster, the organisation responsible for the management of the country code Top Level Domain (ccTLD) for .UA (Ukraine), recently announced that it was pausing domain name deletions as a result of the ongoing conflict. It also stated that the domain name redemption period, which usually lasts for a period of 30 days following the expiry of a domain name, would now run until the end of the current period of martial law.
The latest statistics released by the Registry indicate that more than 300 domain names were not renewed within the required time frame. Although the Registry continues to operate, having moved much of its infrastructure outside of the country, it has had to deal with a number of Denial-of-Service (DoS) attacks. Despite this, Ukrainian domain name registrations have continued to increase. Hostmaster reported that between 24 February and 25 March there were over 3,000 new .UA domain registrations (over 2,000 of which were under .COM.UA).
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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 order the transfer of a domain name that was identical to the Complainant’s prior trade mark because the Complainant failed to prove that the Domain Name had been registered in bad faith.
The Complainant was Institut de Radioprotection et de Sûreté Nucléaire, a French public body operating in the field of research and expertise about nuclear and radiation risks. It owned several trade mark registrations for IRSN including French trade mark No. 4186540 and International trade mark No. 1290146, both registered in 2015. It also owned the domain name irsn.fr.
The Respondent was Domain Admin, FindYourDomain, based in the United States.
The Domain Name was irsn.com, registered on 16 April 2021. It resolved to a parking page with sponsored links and was offered for sale at the website “www.perfectdomain.com” for USD 29,999.
The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name.
To be successful in a complaint under the UDRP, a Complainant must satisfy the requirements of paragraph 4(a) of the UDRP, namely that:
(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 disputed domain name has been registered and is being used in bad faith.
With regard to the first limb, the Complainant contended that the Domain Name was identical to its registered IRSN trade mark and the Respondent conceded this. The Panel accepted the Complainant’s submissions and found that, disregarding the TLD suffix, the Domain Name was identical to the Complainant’s trade mark. Therefore, the Panel found that the Complainant had established the first element of paragraph 4(a) of the UDRP.
As far as the second limb was concerned, regarding the Respondent’s rights or legitimate interests, the Complainant asserted that the Respondent had registered the Domain Name only for commercial gain, either from the pay-per-click links or from an eventual sale at an amount in excess of the documented fees directly in relation to the Domain Name. The Complainant added that the Respondent was not commonly known by the Domain Name. In addition, the Complainant argued that the website at the Domain Name had a parking page with sponsored links relating to the Complainant’s field of activity. As such, the Complainant claimed that the Respondent had no rights or legitimate interests in respect of the Domain Name.
The Respondent rebutted these arguments by submitting that it acquired the Domain Name in connection with its legitimate business of buying and selling short, generic, otherwise appealing and inherently valuable domain names. Moreover, the Respondent stated that the Domain Name consisted of the acronym “irsn”, which was used to identify many organizations, individuals and concepts, and that it was therefore entitled to buy the domain name corresponding to that acronym.
In light of its findings under the third limb of the Policy, the Panel did not need to decide on the eventual existence of the Respondent’s rights or legitimate interests.
Regarding the third limb, the Complainant asserted that the Respondent acquired the Domain Name for the sole purpose of making a profit from the pay-per-click links or from selling it to the Complainant or to a competitor of the Complainant for an amount higher than the documented fees in relation to the Domain Name. Moreover, the Complainant underlined other potential indicators of bad faith on the part of the Respondent, such as the Respondent’s use of a privacy service, the fact that the Respondent owned almost 1,500 domain names, some of them corresponding to famous third party trade marks, and the fact that the Complainant was a well-known government agency in France, whose trade mark predated the Domain Name by a number of years.
In response, the Respondent stated that it had no knowledge of the Complainant’s trade mark as it consisted of a French government agency whose mandate did not extend to the United States. It argued that even if some of its domain name registrations violated third party trade mark rights, that would not suffice as evidence of a pattern of bad faith domain name registrations. In addition, the United States version of the parking page did not list ads related to the Complainant’s field of activity. It further observed that the price of USD 29,999 for the Domain Name was not unusually high for a four-letter “.com” domain name.
The Panel first noted that a number of prior UDRP cases had explored screening obligations on domainers. However, the Panel found that this was not applicable in the present case given that the arguments presented by the Complainant failed to create even an inference that it was being targeted. The Panel was of the opinion that the Respondent had demonstrated that it was not aware of the Complainant when it registered the disputed Domain Name, and that it acquired the Domain Name as a result of its 4-letter value, rather than by reference to the Complainant. In respect of the Respondent’s other registrations of domain names including famous third party trade marks, the Panel did not feel that the Complainant had highlighted any notable features of the present case that evidenced any particular pattern of cybersquatting incorporating the disputed Domain Name. The Panel therefore found that the Complainant had failed to prove that the Domain Name had been registered in bad faith and denied the Complaint. The Panel did not need to decide whether the Respondent was using the domain name in bad faith, given its findings in relation to bad faith registration.
Comment
This decision illustrates how important it is to prove that a disputed domain name was registered to target a particular trade mark owner, especially when it consists of an acronym that may be subject to various interpretations. Complaints brought under the UDRP will fail when bad faith registration is not apparent, regardless of any use (under the UDRP it is necessary to prove both bad faith registration and use). In the present case, even though the Domain Name was identical to the Complainant’s prior trade mark, in the absence of any tangible evidence of targeting the Panel was obliged to deny the Complaint.
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 refused to transfer the disputed domain name alvaline.com, finding that the Complainant had failed to prove that the Respondent had registered the Domain Name in bad faith.
The Complainant was BelGro, IOOO, a Belarusian manufacturer of kitchen furniture. The Complainant owned several trade marks incorporating the term ALVALINE, registered in 2003 and 2009. The Respondent was an individual based in Russia.
The Domain Name was registered on 25 October 2002. The Complainant argued that the Respondent was one of its former employees and registered the Domain Name on behalf of and under the instructions of the Complainant. The Complainant further alleged that the Respondent was previously the registrant of alvaline.ru and was forced to transfer it to the Complainant following a trade mark infringement lawsuit in Russia. The Respondent denied having ever been employed by the Complainant and argued that he initially developed the ALVALINE brand and then the Complainant registered the corresponding trade mark without consulting him. The Respondent also argued that he initially registered the Domain Name for the Complainant expecting to be paid later on, but having never received any payment the Respondent started to use the Domain Name for his own benefit. At the time of the proceedings, the Domain Name resolved to an inactive website.
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 ALVALINE 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 that the Complainant had failed to establish bad faith registration on the part of the Respondent.
Under the third element of paragraph 4(a) of the UDRP, the Panel underlined that although the Complainant’s trade marks were registered after the Domain Name, a finding of bad faith registration could still have been possible if the Complainant had established that the Respondent intended to unfairly capitalise on the Complainant’s as yet unregistered trade mark by registering the Domain Name. However, the Panel considered that neither of the parties had provided enough evidence to substantiate their claims. No formal contract, payment slip or internal correspondence was provided by the Complainant to establish the Respondent’s alleged employment, nor was any copy of the judgment related to alvaline.ru submitted, nor any contractual documents to establish the nature of the Respondent’s alleged business relationship with the Complainant.
The Panel therefore denied the transfer of the Domain Name on the basis that the Complainant had not established that the Respondent had registered the Domain Name in bad faith. Given that the UDRP required the Complainant to establish that the Domain Name had been both registered and used in bad faith, the Complaint therefore failed, and it was not necessary for the Panel to go on and make a finding as to whether the Domain Name had been used in bad faith.
Comment
This decision serves as a useful reminder of a basic yet essential principle, which is that any claim has to be substantiated by supporting evidence. In addition, under the UDRP it is necessary for complainants to demonstrate both registration and use in bad faith, unlike a number of similar policies adopted by various country-code Top Level Domains (ccTLDs), where registration or use in bad faith is required. As a result, if a UDRP complaint fails on bad faith registration, there is simply no need for a Panel to consider bad faith use.
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 ordered transfer of the disputed domain name eutelsat.sucks, finding that the Respondent’s “criticism” website amounted to a pretext for cybersquatting and commercial activity.
The Complainant was Eutelsat, a French company operating in the satellite communication field. The Complainant had registered a number of trade marks, including International Trademark Registration No. 479499, EUTELSAT, registered on 20 June 1983. In addition, the Complainant owned the domain name eutelsat.com, which resolved to the Complainant’s official website.
The Respondent was Domain Admin, Honey Salt Ltd, of the United Kingdom. The disputed domain name was registered on 29 March 2021, and resolved to a website showing information, comments and criticism about the Complainant in wiki pages, together with links to other pages with similar content concerning third-party brand owners. According to evidence submitted by the Complainant, the website at the disputed domain name featured the statement “If you ask us if we would sell the domain, our answer is simple. Absolutely not. We will give it to you… To make it as simple as possible for you to have this domain, simply take this Authorization Code to your favourite domain name registrar, and they can transfer it right to you.” When attempting to have the disputed domain name transferred, the Complainant found that transfer of the disputed domain name was not free of charge, but that it implied a transfer fee of USD 4,270, as the disputed domain name was determined to be a “premium domain name”.
In order to prevail, a complainant must demonstrate, on the balance of probabilities, that it has satisfied 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.
Identity or confusing similarity
Under paragraph 4(a)(i) of the UDRP, the Panel found the disputed domain name to be confusingly similar to the Complainant’s EUTELSAT trade mark, in that the disputed domain name comprised the Complainant’s trade mark in its entirety. The Respondent had argued that the disputed domain name could not be considered to be confusingly similar, as the negative term “sucks” necessarily prevented confusion. The Panel noted that the generic Top-Level Domain (“gTLD”) was to be ignored for purposes of assessing the similarity between a trade mark and a domain name, and observed that the test under the first element did not require actual confusion, as asserted by the Respondent.
Rights or legitimate interests
Under paragraph 4(a)(ii) of the UDRP the Panel noted that the contents of the website to which the disputed domain name resolved consisted of criticism that had been aggregated from external third‑party resources, and that such content was accompanied by a links to a broad range of unrelated third parties, including celebrities, television shows, and famous brands. The Panel commented that even if it was accepted that the aggregation of third-party criticism was legitimate, in the present case the Respondent’s use of the disputed domain name did not qualify as mere non-commercial or fair use, but rather the content of the Respondent’s website was a pretext for cybersquatting and commercial gain. The Panel further rejected the Respondent’s claim that “no reasonable user would think that [the disputed domain name] is owned or affiliated with the Complainant”, finding that the notion that a brand owner would not be willing to be associated with a “sucks” concept (either in marketing, as a domain name, an email address, or otherwise) was not a universally shared view, and further noting that appending “sucks” to a domain name did not have the effect of giving the Respondent a “free pass”.
Bad faith
Under paragraph 4(a)(iii) of the UDRP, the Panel noted that the reputation of the Complainant’s EUTELSAT trade mark in the field of satellite communication had been clearly established, and found that the Respondent likely knew of the Complainant and registered the disputed domain name because it was confusingly similar to the Complainant’s trade mark. Following on from the Panel’s findings under the second element, the Panel observed that the Respondent’s underlying reason for creating a “criticism” website at the disputed domain name was to increase traffic, thereby increasing the value of the disputed domain name, with a view to selling it. The Panel questioned the legitimacy of the Respondent’s designation of the disputed domain name as a “premium domain name” (and accompanying elevated price), noting that prior UDRP cases involving the Respondent’s “.sucks” business model were concerned with domain names corresponding to unique marks of well-known brands, and that registrars were known to set their pricing competitively based on wholesale costs.
Indeed, the fact that the Respondent had been involved in an abusive pattern of abusive “.sucks” registrations further supported a finding of bad faith.
Comment
The present case is one of over a dozen UDRP cases filed against Honey Salt Ltd, involving a domain name consisting of an exact match with a well-known trade mark registered under the “.sucks” gTLD. Despite the Respondent’s creation of websites that had the prima facie appearance of criticism sites, prior UDRP panels have overwhelmingly held that the Respondent’s websites were not aimed at representing a genuine and fair exercise of free speech rights, as protected under the UDRP, but rather that the Respondent’s use of such domain names was a pretext for cybersquatting and commercial activity in the form of domain name sales. With brand owners consistently opting for recuperation under the UDRP, rather than purchases from the Respondent, commentators have recently observed that the Respondent’s business model appears to have failed, noting that thousands of “.sucks” domain names were either allowed to lapse, or were deleted in late 2021.
The decision is available here.
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Authored by the Anchovy News team.
Anchovy News editorial team:
[co-author: Laëtitia Arrault, Sean Kelly, Cindy Mikul, and Tony Vitali]
Anchovy® – Global Domain Name and Internet Governance
Hogan Lovells offers a unique, comprehensive and centralized Paris-based online brand protection service called Anchovy® for global domain name strategy, portfolio management and global enforcement.
We are accredited registrars with many country-specific Registries worldwide and the only law firm to be an accredited ICANN registrar.
We also specialise in all aspects of the ICANN new generic Top Level Domain (gTLD) process and we are an agent for the Trademark Clearinghouse. As the global Domain Name System undergoes an unprecedented expansion, brand owners must revise their online protection strategies and we are ideally placed to guide them. We are also frequently brought in to advise on cybersecurity issues arising across the globe.
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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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