This is the March 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

• Re-launch of .TRUST
• There is more to Belgium than chocolate
• CZ.NIC publishes 2020 domain name statistics

DOMAIN NAME RECUPERATION NEWS

• No response does not mean automatic success
• Unlucky (Louis) thirteen
• Domain name use includes email services

Newsletter sections:

• Domain name industry news
• Domain name recuperation news

For earlier Anchovy News publications, please visit our Domain Names practice page. 

Domain name industry news

Re-launch of .TRUST

Uni Naming & Registry (UNR), which currently operates 25 new generic Top Level Domains (gTLDs) such as .LINK, .SEXY and .AUTO, has just launched .TRUST.

Originally, the .TRUST new gTLD was granted by the Internet Corporation for Assigned Names and Numbers (ICANN) to Deutsche Post in 2013, who then sold its rights to NCC Group, a UK information assurance firm. .TRUST was first launched in December 2014 at a particularly high price with rigorous registration and security policies to comply with.

The new gTLD then changed hands again as UNR acquired it last year. In its press release, UNR states that “businesses and individuals should use .Trust domains to establish authenticity, emphasize privacy, amplify social responsibility, and promote trusted engagement with customers.”

UNR is now re-launching .TRUST as un unrestricted gTLD, in three phases:

• Sunrise: 24 March - 21 April 2021

Because it is a re-launch, the .TRUST Sunrise is not just reserved to holders of trade marks registered at the Trade Mark ClearingHouse (TMCH). Indeed any entity with a naming right can participate in the Sunrise. Valid naming rights include:

• Trade marks
• Company names
• Product names
• DBA, fictitious, and trade names
• Individual names and aliases

Thus priority will not be given to users of the TMCH and domain names will be allocated on a first come, first served basis.

• Early Access Period (EAP): 21 - 28 April 2021

The EAP will be open to the general public on a first come, first basis, but during this phase domain names will be available at higher prices than normal. Prices will decrease day by day, thus a domain name will be much cheaper on the seventh day of the EAP than on the first day.

• General Availability: 28 April 2021

Domain names will be available for everybody on a first come, first served basis at the standard price from 28 April onwards.

It should be noted that the Registry has set the .TRUST registration fee rather high. However, unlike most other new gTLDs, one and two-character domain names are accepted and there are no premium or reserved domains.

There is more to Belgium than chocolate

In early February of this year DNS Belgium published a market survey which showed that 2020 saw a substantial increase in the number of .BE domain name registrations and a change in the profile of the average registrant. These changes are no doubt directly linked to the COVID-19 pandemic and its lockdowns that have prompted a shift to online pastimes and other e-business opportunities.

DNS Belgium’s market survey revealed that the profile of the average Belgian domain name registrant has changed. Previously registrants have mostly been “business-minded professionals”, whereas people from all backgrounds have now become more interested in registering domain names.

In 2019, 35 percent of Belgians who took part in the survey said that they were considering registering a domain name, whereas in 2020 this figure rose to 42 percent, with 28 percent of people who had registered a domain name in 2020 saying they had done so sooner than expected due to the pandemic. Throughout 2020, entrepreneurs were still more likely to register a domain name than any other group, with 17 percent of them saying that they would register a domain name within two years and another 35 percent within the next 3-5 years. More so now than in the past, domain names are seen as part and parcel of doing business.

The market survey also showed that Belgian business owners still have a few hesitations with regard to registering domain names for their websites, primarily linked with the cost of doing so, particularly when websites may be set up at no cost via a number of social media platforms. In this regard, DNS Belgium notes that relying solely on a social media platform for a business website is a risky prospect as the site is ultimately under the control of the platform, which could change the rules at any time, or even delete or block the site.

Along with the use of the Internet for research and communication purposes, the market survey showed that online purchases had, of course, increased in 2020. With the increase in use of the Internet comes an increase in the risk of cyberattacks and the survey showed that 61 percent of Belgians have concerns about security while surfing the internet, compared with 49 percent in 2019. For respondents, the three main indicators of the trustworthiness of a website were the extension, the domain name and the encryption of the website, with 45 percent responding that they used HTTPS as the basis for identifying whether a website could be trusted. Unsurprisingly, the extensions that inspired the most trust were .BE and .COM.

As for a number of other ccTLDs, the effect of the pandemic on domain name registrations in Belgium has been positive and, although Belgians in general continue to prefer .BE and .COM, more interest was observed in other extensions such as .FR, .EU, .NL, .ORG and .NET as well as an increase in the popularity of .ONLINE, .BRUSSELS and .JOBS.

CZ.NIC publishes 2020 domain name statistics

The CZ.NIC Association, the Registry that oversees the Czech Top Level Domain .CZ, recently published its 2020 Domain Report. This Report provides key statistical data concerning the .CZ namespace and showed that, like many domain name Registries, the COVID-19 pandemic has provided a boost to the number of domain names registered in the .CZ extension.

In the CZ.NIC 2019 Domain Report, the Registry had forecast a downturn in the number of .CZ domain name registrations in 2020. However, contrary to this prediction, the number of .CZ domain names actually increased by 3.2% compared with 2019, with the total number of registered .CZ domain names reaching 1.37 million. According to CZ.NIC, this domain name growth was a result of the COVID-19 pandemic, with the largest increases in 2020 being recorded during the periods March–June and October–December, which seem to coincide with the pandemic waves. The Registry has also calculated that some 2,500 .CZ domain names registered in 2020 are “likely to be directly connected to the pandemic”, as they comprise terms such as “corona”, “korona”, “covid”, “virus” or “respirator”.

The Report also showed that 1.27 million .CZ registered domain names (around 92.8% of the total domains) were held by registrants located in the Czech Republic. The four countries with the next highest number of domain names were Slovakia (24,397 domains), Germany (14,923 domains), the United States (10,079 domains) and the United Kingdom (5,419 domains). Interestingly, the number of .CZ domain name holders in the Bahamas has increased from 70 (2018) to 2,999.

CZ.NIC also recorded an increase in 2020 registrations of “e-shop domains”, which is not entirely surprising given that, due to the COVID-19 restrictions, normal retail business activities were either greatly reduced or halted during the latter part of 2020. In addition, the number of .CZ domain names secured by DNSSEC accounted for more than 60% of the total number. The number of parked domain names also significantly increased and accounted for 35.87% of domain names, perhaps a result of speculative domain name registrations on the back of the COVID-19 pandemic.

To visit CZ.NIC, please click here.

Domain name recuperation news

No response does not mean automatic success

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 a Domain Name because it found that the Complainant had failed to demonstrate that the Respondent had acted in bad faith, even though the Complainant held a trade mark that exactly matched the Domain Name and the Respondent did not reply.

The Complainant was FDC Limited, a company based in India which manufactured and distributed healthcare products since 1936. In 1996, the company was listed on the Bombay and National Stock Exchanges of India. It held twelve Indian and one International trade mark for "ELECTRAL" and had used them since 1972 to market one of its products, an oral rehydration salt. The Complainant claimed that its product was the market leader in its category in India with around 70% market share, and it was also exported to a number of other countries

The Respondent was Electronica Digital ELECTRAL Cia. Ltda., a company based in Ecuador. No further information was provided.

The disputed Domain Name, electral.com , was registered on 23 September 2012. It resolved to a website which displayed two device marks, one including the term "ELECTRAL" in a slightly stylised presentation, and what appeared to be the address of the Respondent.

The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name to which the Respondent never replied.

To be successful in a complaint under the UDRP, 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 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.

Under the first requirement, the Panel recognised that the Complainant had trade mark rights in ELECTRAL at the date that the Complaint was filed. The Panel also considered that the disputed Domain Name was identical to the Complainant’s trade mark. The Complainant therefore satisfied paragraph 4(a)(i) of the UDRP.

The Panel held that the second requirement of the Policy did not need to be addressed in light of the third requirement. Under the third requirement, the Panel found that the Respondent had not registered and used the disputed Domain Name in bad faith.

First, the Panel noted the points that were to the Complainant’s advantage. The Complainant had substantial international activity, and even though this was not in Ecuador where the Respondent was based, the global reach of the Internet did not preclude a finding of bad faith. However, the Panel dismissed the Complainant’s argument based on constructive notice, finding that panels rarely applied this concept outside disputes between parties located in the United States of America, unless there were additional factors that may have alerted the Respondent. Nevertheless, the Panel acknowledged that it was certainly possible that the Respondent knew of the Complainant and its trade mark when registering the Domain Name. The Panel also accepted that the term “electral” was a coined term distinctive of the Complainant’s goods. Furthermore, in the Panel’s opinion, the website to which the disputed Domain Name resolved was “rudimentary, to say the least”.

However, despite the above, the Panel did not find that the Domain Name had been registered and used in bad faith. The Panel noted that the Respondent had been using the Domain Name for eight years without referring to the Complainant’s type of products. Moreover, the Panel surmised that the Domain Name appeared to be derived from the Respondent’s corporate name. In the Panel’s view, the Respondent’s name and the content of its website, although limited, suggested that it was involved in digital electronics or IT related activities, and the first two words of the Respondent’s name, “electronica digital”, could be translated as “digital electronics”. The Panel noted that, whilst the term “electral” was not directly descriptive of electronics or computer / IT products or activities, it was, however, a fairly obvious contraction of the terms “electronica digital”.

Panels may undertake limited factual research into matters of public record if such information would be useful to assess the case merits and reach a decision (as per the general powers of panels set out in paragraphs 10 and 12 of the UDRP Rules). In this case, the Panel noted that there was no information about when the Respondent was incorporated as a company or when it adopted its name, and so performed some limited internet research to find that company reports for a company of that name, incorporated in Ecuador in 1982, were available. The Panel also noted that the cases cited by the Complainant to support its arguments could all be differentiated from the present case and thus were of no assistance to the Complainant.

Finally, the Panel noted that the Written Notice of the Complaint was undeliverable to the Respondent’s address and that the provision of a false address could be a basis for inferring registration and use in bad faith. However, in this case the Panel was not prepared to draw such an inference in view of the surrounding circumstances, and in addition the Respondent must have been renewing the Domain Name during the eight years that it had been registered.

Therefore the Panel concluded that the Complainant had not satisfied paragraph 4(a)(iii) of the UDRP and the Complaint was denied.

This decision demonstrates that, even in cases where respondents do not respond, UDRP panels will nevertheless diligently review all the facts and circumstances in order to come to the right decision, and perform limited factual research if this may be of assistance. In this case, the Panel deduced that, despite the fact that the Complainant had some apparently strong arguments, such as a matching trade mark and a well-known product, the Respondent was unlikely to be targeting the Complainant and seeking to benefit from its reputation, even though the Respondent did not respond and may not have kept the WhoIs information up to date. It is therefore advisable for complainants to make a detailed assessment of potential counter arguments before filing, even if they believe that their case is watertight.

The full decision is available here.

Unlucky (Louis) thirteen

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 louisthirteen.com , finding that the Complainant had failed to prove that the Respondent lacked rights or legitimate interests.

The Complainant was E. Remy Martin & C, a subsidiary of the Remy Cointreau Group, a French company producing and selling cognac. The Complainant registered several trademarks for LOUIS XIII as early as 1880 in France, and had a large trademark portfolio comprising the word element “louis” and “louis xiii”, including, but not limited to, the International trademark LOUIS XIII DE REMY MARTIN registered in 1995. The Complainant also used the domain name louisxiii-cognac.com . Needless to say, one of the cognacs sold by the Complainant was called Louis XIII.

The Respondent was an individual based in the United Kingdom. He was a director of a company called Louis Thirteen Group Limited, incorporated in 2019. The Respondent registered the Domain Name in November 2017. At the time of the proceedings, the Domain Name resolved to a website offering a range of white-label products including protective masks against bacteria and viruses in the context of the Covid-19 pandemic.

The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name. The Respondent did not reply.

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 trademark 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.

First, the Panel underlined that the Respondent’s failure to submit a formal Response did not by itself mean that the Complainant would be deemed to prevail, and pointed out that the Respondent’s default was not necessarily an admission that the Complainant’s claims were true.

Under the first element of paragraph 4(a) of the UDRP, the Complainant argued that the Domain Name was confusingly similar to its trademark LOUIS XIII because it incorporated the term "louis" and a misspelling of the Roman number "xiii". The Panel rejected the misspelling argument, but underlined that a domain name that consists of a translation of a trademark will normally be found to be identical or confusingly similar to such trademark. The Panel found that "thirteen" was a literal English translation of "xiii" (a Roman numeral), and as a consequence held that the Domain Name was confusingly similar to the trademark.

With regard to the second element of paragraph 4(a) of the UDRP, the Complainant claimed that the Respondent had no rights or legitimate interests in the Domain Name because (i) he was not known as "louis thirteen" at the time of registration of the Domain Name, and (ii) he did not own any trademarks justifying the registration of the Domain Name. The Panel acknowledged that the Complainant's trademark enjoyed a broad scope of protection, but found several aspects supporting a claim to a bona fide offering of goods or services. In particular, the Panel underlined that the website to which the Domain Name resolved related to what could be a genuine offering of white-label goods as, for example, it contained legally required information such as contact details, street address, and company and VAT numbers. Furthermore, the Panel conducted a brief Internet search and found that the Respondent was the director of a company named Louis Thirteen Group Limited, which was incorporated 18 months before the Complaint was filed. The Panel concluded that there was a genuine possibility that the Domain Name could be being used in connection with a bona fide offering of goods or services and, as such, the Complainant had not satisfied the second element of paragraph 4(a) of the UDRP.

In addition, although the Panel underlined that the Complainant’s trademark enjoyed broad protection (possibly even as a famous mark) and noted that the Complainant could still initiate a trademark infringement action against the Respondent in a court of law, in the Panel’s opinion it was not certain, without further substantiation, that the Complainant could oppose the Respondent’s use of “louis thirteen” in relation to activities that did not have any link to the activities of the Complainant (based on the evidence provided). The Panel emphasised that the reputation of the trademark on which the Complainant relied and the inferences that the Complainant suggested were drawn from that would require an assessment of trademark law and principles that went beyond the scope of the UDRP. Had the Complainant put forward clear evidence that it had registrations for, and engaged in commercial activity in relation to the goods seemingly sold by the Respondent, the Panel’s analysis may have been different, but that was not the case.

As a consequence, the Panel found that Complainant had failed to prove that the Respondent had no rights or legitimate interests in the Domain Name and so the Complaint was denied. It was not necessary for the Panel to address the question of registration and use in bad faith.

This decision shows that complainants must be cautious when invoking trademark law principles in UDRP proceedings. In this case, it appears that the Panel denied the Complaint in part because the question of whether or not the famous or well-known trademark doctrine applied was beyond the scope of the UDRP, which is intended to deal with cybersquatting and not trademark infringement under national trademark law. Moreover, this case is a reminder that complainants should put forward strong evidence of a respondent's bad faith registration and use of a domain name in order to profit from the complainant’s goodwill and reputation, especially when the commercial activities of the parties differ greatly.

The decision is available here.

Domain name use includes email services

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 a Domain Name because the Complainant failed to prove that it had been registered and used in bad faith. Even though the use of the Domain Name was not readily apparent as it was not being used to point to a website, the Respondent was using it for email services.

The Complainant was RB-Net Romain Bürkle GmbH & Co. KG, a German company. However, no information was provided about the Complainant’s business activity. It was the owner of two figurative trademarks incorporating the term RB-Net, including a German trademark registered in 2013. The Complainant also owned the domain name rb-net.de .

The Respondent was nTelos Network, Inc., a company providing telecommunications services in the United States of America. In its submission, the Respondent identified itself as “Lumos Networks Inc. (fka nTelos Network, Inc.)” further to a name change.

The disputed Domain Name was rbnet.com . It was not resolving. However, the Respondent was using it in connection with an email platform for the Respondent’s customers. It was not clear when the Respondent acquired the Domain Name. It was first registered in February 1996, but the Respondent claimed to have acquired it in 2000.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements set out at paragraph 4(a):

(i) the domain name registered by the respondent is identical or confusingly similar to a trademark 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.

Further to the Respondent’s Response, the Complainant submitted a request for suspension. Both parties submitted Supplemental Filings. Upon the Complainant’s request, the proceedings were subsequently reinstituted and the Panel was appointed.

As stated in section 4.6 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”):

"Paragraph 12 of the UDRP Rules expressly provides that it is for the panel to request, in its sole discretion, any further statements or documents from the parties it may deem necessary to decide the case.

Unsolicited supplemental filings are generally discouraged, unless specifically requested by the panel.

[…]

In all such cases, panels have repeatedly affirmed that the party submitting or requesting to submit an unsolicited supplemental filing should clearly show its relevance to the case and why it was unable to provide the information contained therein in its complaint or response (e.g., owing to some “exceptional” circumstance)."

In the present case, the Panel allowed both the Complainant and the Respondent to file Supplemental Filings, concluding that there was no prejudice to either party or material delay in the case.

As far as the first limb was concerned, the Panel was satisfied that the Complainant had rights in the figurative trademark incorporating the term RB-NET and that the Domain Name was identical to the textual element of this trademark with the omission of the hyphen. It found that the Domain Name was confusingly similar to the Complainant's trademark. Thus the Complainant satisfied the first element set out in paragraph 4(a) of the UDRP.

Moving on to the second requirement, given its finding as to whether the Respondent had registered and used the Domain Name in bad faith, the Panel concluded that there was no need to address the existence of rights or legitimate interests.

With regard to the third requirement, a complainant usually needs to demonstrate that a domain name has both been registered and is being used in bad faith.

As far as bad faith registration was concerned, the Panel examined the chain of ownership of the Domain Name. The date when the Respondent acquired it was unclear, but this was typically the relevant date for the Panel to consider when assessing bad faith. The Respondent stated that it had acquired the Domain Name around 2000 as part of its acquisition of Roanoke and Botetourt Telephone Company (“R&B”), in Virginia, United States. According to the Respondent, R&B registered the Domain Name towards the end of the 1990s to use for its email customers, and this use was still continuing. The Respondent argued that it purchased R&B in an effort to build its telecommunications business and had no knowledge of the Complainant’s business activity.

Although the Complainant relied on trademark rights from 2013, the Panel noted that very little information was provided about the Complainant’s business and goodwill. In addition, the Complainant did not provide any evidence that the Respondent should have been aware of the Complainant and/or its trademark rights at the time that the Domain Name was registered. Accordingly, the Panel concluded that the Respondent did not have the Complainant in mind when it acquired the Domain Name, regardless of whether this could be said to be in the 1990s or in 2000. Therefore there was no evidence of bad faith registration.

Turning to bad faith use, the Complainant argued that the Respondent was not using the Domain Name, but the Panel noted that use for email services also equalled use of the Domain Name for the purposes of the UDRP. Furthermore, the Panel was of the view that the Respondent’s explanation that it currently had over 446 actively registered email users operating under the Domain Name was credible. The Complainant also argued that the Respondent’s rejection of the Complainant’s offers to acquire the Domain Name for reasonable consideration also signalled bad faith. However, the Panel found that the Respondent had provided a reasonable explanation of its reason for rejecting the offers, based on the costs that the Respondent would incur to convert its customers to alternative domains for their email accounts. The Complaint was therefore denied.

The decision is a reminder to brand owners considering filing a UDRP complaint that a domain name may be being used in good faith, even if there is no evidence of it being used to point to an active website. Use of a domain name for email services may be relied upon by a respondent to evidence good faith use, particularly if it began many years ago, and even if such use is not readily apparent from publicly available sources.

The decision is available here.

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