This is the September 2020 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

• New licensing rules for .AU 2LDs require exact match trade marks
• New appeals process for .ORG under the Public Interest Registry Anti-Abuse Policy
• Launch of 1 and 2-character .LU domain names
• .PL continues to prosper

DOMAIN NAME RECUPERATION NEWS

• Complaint for kobra.com comes back to bite Complainant
• Domain name matching a nickname may create legitimate interests
• Bad faith registration hard to prove after 16 years
• The UDRP may not be the appropriate forum

Newsletter sections:

• Domain name industry news
• Domain name recuperation news

Domain name industry news

New licensing rules for .AU 2LDs require exact match trade marks

.au Domain Administration (auDA), the Registry that oversees the .AU namespace, is putting in place new licensing rules that will apply to both new and existing Australian domain names and which are set to come into force on 5 October 2020. These new rules will require that all .AU Second Level Domains (2LDs) registered on the basis of a trade mark be an exact match of the relevant trade mark.

Up to now, auDA’s eligibility rules, which are set out in its Domain Name Eligibility and Allocation Policy Rules for the Open 2LDs, have allowed foreign entities without an Australian presence to register any domain name in the .COM.AU and .NET.AU namespaces provided they held an Australian trade mark registration or application. The rules, as they currently stand, dictate that, to be eligible for a domain name in the .COM.AU and .NET.AU 2LDs, registrants must be:

• an owner of an Australian Registered Trade Mark; or
• an exact match, abbreviation or acronym of the registrant’s name or trademark; or
• otherwise closely and substantially connected to the registrant, in accordance with the categories of “close and substantial connection” set out in the Guidelines on the Interpretation of Policy Rules for the Open 2LDs.

Section 1.4.17 of the new .au Domain Administration Rules: Licensing states that “the applicant or owner of an Australian Trade Mark can rely upon that application or registration to establish an Australian presence, but only in respect of a domain name that is an exact match of the words which are the subject of the Australian Trade Mark application or registration.”

Under Section 2.4.1 of the new rules, a Person applying for a licence must:

• have an Australian presence; and
• satisfy any eligibility and allocation criteria for the namespace being applied for as specified in paragraphs 2.4.3 to 2.4.11.

Section 2.4.4 states that a person applying for a licence in the .COM.AU and .NET.AU namespaces must be:

• a commercial entity; and
• the domain name applied for must be:

(a) a match of the Person’s company, business, statutory or Personal name; or

(b) an acronym of the Person’s company, business, statutory or Personal name; or

(c) a match of the Person’s Australian Trade Mark; or

(d) a match to or an acronym of a name of a related body corporate; or

(e) a match or an acronym of a name of:

(i) a partnership of which the Person is a partner;

(ii) a trust of which the Person is a trustee; or

(f) a match or synonym of the name of:

(i) a service that the Person provides;

(ii) goods that the Person sells (whether retail or wholesale);

(iii) an event that the Person registers or sponsors;

(iv) an activity that the Person facilitates, teaches or trains;

(v) premises which the Person operates

and which that Person is providing at the time of the application.

Section 1.4 (Definitions) of the new rules stipulates that:

Exact match means that the domain name being applied for is identical to the words which are the subject of an Australian Trade Mark. The domain name must include all the words in the order in which they appear in the Australian Trade Mark, excluding:

• DNS identifiers such as com.au;
• punctuation marks such as an exclamation point or an apostrophe;
• articles such as ‘a’, ‘the’, ‘and ’or ‘of’; and
• ampersands.

Additionally, sole reliance on trade mark applications or registrations will be restricted to word marks under the new rules. This means that a domain name cannot be registered solely on the basis of a logo or device trade mark application or registration (even if this includes letters or numbers in the logo). Further, eligibility to hold a domain name is lost if the trade mark registration relied upon is cancelled or removed from the Register, or if the trade mark application lapses.

As the new Licensing Rules will apply to domain names both created and renewed after the new rules come into effect, existing domain names relying solely on logo trade marks or trade marks that do not match the domain name will be susceptible to suspension or cancellation. Once a domain name is cancelled it is released to the general public.

In light of the above, registrants of .COM.AU and .NET.AU domain names would be well advised to review their Australian domain name portfolio in order to determine whether all of their domain names are compliant with the new rules. This is particularly important in view of the imminent release of the Top Level .AU extension, which looks likely to happen in the first half of 2021.

New appeals process for .ORG under the Public Interest Registry Anti-Abuse Policy

In a recent Registry blog post, the General Counsel of Public Interest Registry (PIR) has outlined PIR's new two-step appeals process for .ORG domain names under PIR's Anti-Abuse Policy. Under the new appeals process, registrants who believe that their .ORG domain names have been suspended unfairly can contact PIR and appeal the suspension to a neutral third party.

PIR published their Anti-Abuse Principles, which serves as their "north star to address questions of abuse", in 2019. PIR has taken the position that it will only take action on “technical Abuse of the Domain Name System” and only address website content issues in very limited circumstances. As a result, PIR's Anti-Abuse Policy focuses on DNS Abuse, such as phishing, malware, botnets. etc., rather than website content abuse. According to Brian Cimbolic, Vice President and General Counsel of PIR, the Registry suspended thousands of domain names related to DNS Abuse in 2019, but only suspended eleven due to website content (connected to the distribution of child sexual abuse materials and the distribution of opioids online).

Brian Cimbolic also stated that PIR is committed to due process and, as such, PIR is now offering a two-step process to address questions concerning its anti-abuse efforts. As a result, any registrant can contact PIR if they believe that PIR has taken the wrong action under their Anti-Abuse Policy. This is an informal process which is free of charge and through which, according to Brian Cimbolic, PIR has reversed several suspensions after being provided with new information. This free review also provides registrants with the possibility of having the suspension overturned without incurring any costs associated with the formal registrant Appeals process.

In addition, PIR is instituting a new solution that creates "the right to appeal a suspension under our Anti-Abuse Policy to a neutral third party" for .ORG registrants. This appeal mechanism will be administered by Forum (previously the National Arbitration Forum). Unlike the informal appeals process, Forum will charge $1,200 per case, with PIR subsidising $700 of this fee and reimbursing the other $500 if the appeal is successful.

In order to formulate this "neutral-party appeals process", PIR consulted various groups including PIR's Advisory Council, Article19, the Danish Institute for Human Rights, the members of several ICANN constituencies (including the ALAC, BC, GAC, NCUC and the Registrar Stakeholder Group) as well as the Internet and Jurisdiction (I&J) Policy Network. Nonetheless, Brian Cimbolic has emphasised that the launch of the new appeals process "does not mean that PIR is expanding its Anti-Abuse Policy" or that PIR is "going to start acting on more “content” referrals". Simply, the new appeals process will allow registrants to have their appeal against a suspension for abuse heard and considered by a neutral third party.

Launch of 1 and 2-character .LU domain names

The Restena Foundation, the Registry running the country code Top Level Domain (ccTLD) for Luxembourg, is opening the registration of one and two-character domain names under .LU.

The launch is taking place in 3 phases set out below:

- Sunrise period (31 August – 16 October 2020):

This phase is opened to holders of trade marks valid in Luxembourg and to companies based in Luxembourg. The trade mark or company name needs to match the requested domain name. Brand owners have until 2 October to submit their application, which entails a non-refundable Registry administration fee of €750. Applications will then be reviewed by the Registry, and if there are several applicants for one domain name, a private sale will take place between the applicants as from 16 October.

- Landrush (2 November – 14 December 2020):

During Landrush, public sales will take place for the domain names that were not registered during Sunrise. Bidders will need to register with a specific selling platform and domain names will be granted to the highest bidders.

- General availability (from 15 December 2020 onwards):

As from 15 December, domain names that are still available can be registered on a first-come, first-served basis via accredited registrars, as per the standard registration process.

.LU domain names are open to anyone and there are no registration requirements. It is one of the few ccTLDs that only offers registrations at the top level under .LU, when most ccTLDs also offer registrations at the second level under extensions such as .COM.XX or .NET.XX. The current number of registered .LU domain names is approximately 104,600. By way of comparison, the largest ccTLD by number of reported domain names is .TK with some 27.5 million domain names.

Despite the relatively high application cost during Sunrise, brand owners are strongly advised to apply for the domain names corresponding to their brand to prevent third parties from grabbing them during Landrush or General availability, as one and two-character domain names are popular and high value.

.PL continues to prosper

NASK, the Registry responsible for the management of the .PL (Poland) domain name space, recently published a report on the .PL domain name market for Q2 2020. The report shows that the market for .PL domain names continues to flourish with a total of 2,455,561 active domain names registered at the end of Q2 2020, representing an increase of around 4,500 domain names from the beginning of April until the end of June 2020.

Of these 2,455,561 domain names, 1,939,750 were registered directly under the top level .PL extension, 411,686 under one of the second level extensions (for example .ORG.PL and .INFO.PL), with the remaining 104,125 registered under one of the second level regional extensions (for example .WAW.PL and .OLSZTYN.PL). As the above figures show, the preference is to register directly under .PL.

Although the number of registered domain names remained stable during Q2 2020, a slight drop of 1,468 domain names over Q1 was observed, with a total of 194,476 domain name registrations for Q2 2020 as opposed to 195,944 for the previous quarter. Splitting out the number of registrations for the Q2 period by month, April recorded the highest number of new domain name registrations with 71,059, followed by May with 65,932 and June with 57,485. These increases could be due to the “Covid boost” seen in several other Registries as a result of local businesses moving to online commerce.

The report also touched on the problem of cyber attacks under .PL and indicated that 288 domain names were blocked for violating the provisions of the .PL Domain Name Regulations, generally as a result of phishing. The risk of cyber attacks is always higher for a domain name extension such as .PL that is not restricted, meaning that anyone can register a .PL domain name for a modest fee.

The full report can be found here.

Domain name recuperation news

Complaint for kobra.com comes back to bite Complainant

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 kobra.com, finding that the Complainant had failed to establish bad faith, entering a finding of Reverse Domain Name Hijacking (RDNH).

The Complainant, Elcoman Srl, was an Italian company. Since 1985, the Complainant had been engaged in selling machines that shred and trim paper and documents in other media. The Complainant’s products were sold in more than 90 countries around the world. For use in connection with the Complainant’s products, the Complainant owned trade mark registrations for KOBRA, registered in various jurisdictions, the earliest of which was a figurative Italian trade mark dating from 1996.

The Respondent was an individual based in the United States. At the time that the Complaint was filed, the disputed domain name did not resolve to an active website; however, archived screen captures from Archive.org showed that from 2002 to 2014, the disputed domain name resolved to a financial market data website called “marketdata:world”. Prior to 2002, the disputed domain name resolved to a web page stating in German that the website was under construction, and that the intended website was to be dedicated to the website author’s “love of snakes”.

Prior to filing the Complaint, the Complainant had attempted, through two different brokers, to purchase the disputed domain name, first for USD 1,000, and later for USD 4,000. The second broker had replied to the Complainant stating that the Respondent was willing to sell the disputed domain name for USD 80,000.

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 that the Complainant had established rights in the KOBRA trade mark, and that the disputed domain name incorporated the textual elements of the Complainant’s registered mark in their entirety.

Under paragraph 4(a)(ii) of the UDRP, the Panel considered that the Complainant had established a prima facie case that the Respondent had no rights or legitimate interests based on the lack of permission granted to the Respondent for him to use the Complainant’s KOBRA trade mark in the disputed domain name. The Respondent argued that he was using the disputed domain name in connection with a bona fide offering of goods or services, referring back to the Respondent’s blog covering financial market information, and that the name referred to a popular client software product that was actively used in the financial sector until around 2013. The Panel took the view that rights or legitimate interests were most appropriately assessed at the time that the Complaint was filed, and found that the Respondent had not demonstrated rights or legitimate interests in the disputed domain name so as to rebut the Complainant’s prima facie case against him, finding for the Complainant under the second element of the UDRP.

Under paragraph 4(a)(iii), the Panel noted the disputed domain name’s registration some 21 years prior to the filing of the Complaint, and noted that the Complainant faced difficulties in proving bad faith registration and use of the disputed domain name. The Panel noted that the Complainant’s first trade mark rights accrued in Italy in 1996, and while the Respondent appeared to have acquired the disputed domain name in 2002 (after the German announcement on the corresponding website), there was no evidence demonstrating that the Respondent had registered the disputed domain name with the Complainant’s trade mark in mind. While the Panel was unable to conclude that the disputed domain name had inherent value as a dictionary term corresponding to the English term “cobra”, as claimed by the Respondent, there was nothing to suggest that the Respondent had registered the disputed domain name opportunistically with a view to selling it to the Complainant at a date in the future, as the owner of the KOBRA trade mark. In light of the above, the Complaint failed on the third element.

In its finding that the Complainant had engaged in RDNH, the Panel commented that the Complainant had failed to properly investigate the facts. A basic search for archived screen captures of the disputed domain name would have revealed the Respondent’s prior use of the disputed domain name, which would make it difficult to prove bad faith. The Panel further noted that the Complaint did not satisfactorily address the obvious need to establish that the Respondent was aware of the Complainant’s mark at the time he registered the disputed domain name. Finally, with regard to the Complainant’s failure to successfully purchase the disputed domain name at a price that was acceptable to the Complainant, the Panel noted that refusal to sell is not necessarily bad faith, and that the UDRP is not designed to assess claims geared to putting a dormant domain name to use.

It is well established that mere delay between the time of registration of a domain name and the filing of a UDRP complaint does not prevent the Complainant from prevailing on the merits. This case clearly demonstrates a fundamental aspect of the UDRP, in that the complainant is required to produce evidence to prove that the respondent either knew, or should have known, of the complainant’s trade mark at the time it registered the domain name at issue. Failure to do so will result in the denial of a complaint, notwithstanding a respondent’s lack of discernable rights or legitimate interests in a domain name at the time that the complaint is filed.

The full decision is available here.

Domain name matching a nickname may create legitimate interests

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 on the basis that it reflected the Respondent’s personal nickname and was not targeting the Complainant’s trade mark.

The Complainant was Caviar Petrossian, part of the PETROSSIAN group founded in Paris in 1920. The Complainant mainly operated in the sale of caviar and ran several restaurants, boutiques and corner shops under the trade mark PETROSSIAN in different cities around the world. It and its affiliated company owned several trade marks for PETROSSIAN, including a United States trade mark registered in 1976, and numerous domain names incorporating this trade mark, such as petrossian.com registered in 1997.

The Respondent was Artin Petrossian, an individual based in the United States.

The domain name was artpetrossian.com, registered on 9 July 2018. It was being used to point to a parking page with pay-per-click links related, amongst other things, to caviar products.

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.

As far as the first limb was concerned, the Complainant contended that the domain name was confusingly similar to its PETROSSIAN trade mark as it reproduced the trade mark in its entirety and the mere addition of the descriptive term “art” could not prevent a finding of confusing similarity. The Respondent countered that “Art Petrossian” was the short form of his own name, Artin Petrossian, and was therefore unrelated to the Complainant’s trade mark.

Given that the first limb under the UDRP functions primarily as a standing requirement, the Panel accepted the Complainant’s contention and found that the domain name was confusingly similar to the trade mark in question. It was under the second and third limbs that the Panel took into account the Respondent’s defence with respect to the use of his own name in a domain name.

With regard to the second limb, the Complainant asserted that the domain name was not used in connection with bona fide or legitimate non-commercial or fair use as it resolved to a parking page with pay-per-click links and was allegedly offered for sale. According to the Complainant, the Respondent could not contend that he was commonly known by the domain name prior to the Complainant’s adoption and use of its corporate name, business name and trade mark PETROSSIAN.

In response, the Respondent stated that it had used the name “Art Petrossian” for over ten years both in his career and in social media. As evidence, he provided a copy of his credit card showing the name of Art Petrossian in order to substantiate that he was officially recognized as “Art” and that he used this name interchangeably with his full name for identification purposes. In addition to the domain name, the Respondent also owned the domain name artinpetrossian.com and specified that he was known by the diminutive form of his name, Art, exclusively in a professional setting, as evidenced by his professional email address art.petrossian@[...]. The Respondent further indicated that, in Google searches for “Art Petrossian”, the first page of results made reference to many of his professional and social media accounts.

Although the Respondent, at the Complainant’s request, also provided copies of his passport and birth certificate to prove that his name was actually Artin Petrossian, the Complainant argued that his choice of “art” rather than “Artin” for the registration of the domain name was intentional as “art” was unlikely to be perceived by the public as the diminutive form of his first name “Artin”, but was more likely to be considered as the common word “art” and thus create confusion with the Complainant’s distinctive trade mark. The Respondent countered that “Art” was a common abbreviation for his real name and was also used by other Armenian-Americans as a short form of their name. The Respondent further explained that the sponsored links were displayed by the registrar concerned without his consent and that it was never his intention to have anything other than a blank placeholder page until his website was ready to go live.

In order to assess the Respondent’s rights or legitimate interests in the domain name, the Panel noted that under paragraph 4(c)(ii) of the UDRP it was not necessary for a respondent to have acquired a corresponding trade mark or service mark to prove that it was “commonly known” by a disputed domain name. Instead, the fact that a respondent was “commonly known” by the relevant moniker (e.g., nickname) would prima facie support a finding of rights or legitimate interests under the UDRP, provided that concrete credible evidence was submitted to support this assertion, as explained in Section 2.3 of the WIPO Overview 3.0. In the present case, the Panel found that the evidence provided by the Respondent, such as his birth certificate, credit card and social media profiles, were sufficient to establish that his name was Artin Petrossian and that he was also known by the abbreviated form of his name, “Art”.

For the sake of completeness, the Panel additionally assessed whether there was a general lack of other indicia of cybersquatting. Although the Respondent could not entirely disclaim his responsibility for the pay-per-click links displayed on the parking page associated with the domain name, the Panel noted that, prior to the filing of the Complaint, the Complainant hadn’t sent a cease and desist letter to put the Respondent on notice of the infringing use of the domain name and that the Respondent, once he knew of such links, promptly contacted the registrar to remove them but was unable to do so because the domain name was locked as a result of the UDRP.

In view of the above, the Panel concluded that, on balance, the Respondent had successfully demonstrated that he had rights and legitimate interests in the domain name. The second limb was therefore not satisfied by the Complainant.

Regarding the third limb, given the analysis under the second limb above, the Panel concluded that, although the Respondent may have been aware of the Complainant and its well-known trade mark at the time of registration, he mostly likely registered the domain name to simply reflect his personal name in a corresponding domain name without intending to trade-off the Complainant’s reputation and goodwill. In the Panel’s view, such conclusion was supported, amongst other things, by the Respondent’s registration of the domain name artinpetrossian.com and his use of various social media accounts related to this name. The Panel therefore found that the Respondent’s registration was not in bad faith and dismissed the Complaint.

This decision is a good example of how the UDRP seeks to balance the interests of trade mark owners and domain name registrants whose names are identical to the trade marks in question. Under the UDRP, anyone who can sufficiently substantiate being commonly known by a disputed domain name, either via a personal name or nickname for example, may have legitimate interests in such domain name. One of the earliest illustrations of this was in 2001 when Mr A.R. Mani successfully defended Armani.com (G. A. Modefine S.A. v. A.R. Mani, Case No. D2001-0537). However, it is worth pointing out that in earlier cases complainants generally knew who the respondent was before filing their complaint; whereas now registrant details are frequently unavailable in the public-facing Whois, meaning that complainants are often forced to file complaints without knowing of the existence of what may be an obvious defence. In this case the Complainant had to file the Complaint without knowing the identity of the registrant, and was therefore clearly unable to make a comprehensive prior assessment of chances of success, which may have resulted in a different course of action. This neatly illustrates why disclosure of the Whois details by registrars only after a UDRP is filed is problematic for many brand owners, especially those with trade marks that may also be personal names.

The decision is available here.

Bad faith registration hard to prove after 16 years

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 kalyanjewellers.com, finding that the Complainant had failed to prove that the domain name had been registered and used in bad faith.

The Complainant was Kalyan Jewellers India Limited, an Indian company selling jewellery through retail showrooms and stores since 1993. The Complainant registered several trade marks for KALYAN JEWELLERS and KALYAN between 2003 and 2006. The Complainant also registered the domain name kalyanjewellers.net for a website providing information about its business and promoting the online sales of jewellery since approximately March 2010.

The Respondent was Antony Adam, an individual operating a business providing domain name registration, web hosting, and online radio setup. He registered the domain name in October 2004. The domain name did not resolve to an active website or web page.

The Complainant initiated proceedings under the UDRP for a transfer of ownership of the domain name. The Respondent submitted his Response asserting that while the domain name was registered in his name, the actual true and beneficial owner was an individual named Subha Bharat who had used his services to register the domain name.

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 element of paragraph 4(a) of the UDRP, the Complainant considered that the domain name was confusingly similar to its trade marks. The Complainant argued that it had enjoyed strong rights from use of its trade marks in India and in countries within the Gulf Cooperation Council since 1993.

The Respondent did not contest that the domain name was identical or confusingly similar to the Complainant’s trade marks. Rather, he argued that the Complainant could not have any trade mark rights in the combination of two dictionary words, namely “kalyan”, which means beauty in Sanskrit, and “jewellers”. The Respondent produced to that effect a number of examples of the use of the term “kalyan”, including examples of trade mark registrations by a third parties.

The Panel held that it was in no position to assess whether the Complainant’s trade mark registrations were valid or not on the basis that “kalyan” was a generic term, and noted that even if “kaylan” did mean “beauty” in Sanskrit, it would still not be considered generic for trade mark registration purposes. The Panel therefore found that the Complainant had established trade mark rights, based on its trade mark registrations in India, and that the domain name was identical to such trade marks.

Before proceeding to analyse the second element of paragraph 4(a) of the UDRP, the Panel commented on the Respondent’s contention that he was not the beneficial owner of the domain name. The Panel underlined that there was a lack of evidence to prove the beneficial ownership of Subha Bharat. However, it held that it did not need to resolve that question in order to determine whether the Respondent the or alleged beneficial owner, Subha Bharat, had a legitimate interest in the domain name, pointing out that the existence of a beneficial holder did not permit the registrant (in this case the Respondent) to disclaim use by a beneficial holder, and noting section 3.7.7.3 of ICANN’s Registrar Accreditation Agreement to illustrate this point.

With regard to the second element of paragraph 4(a) of the UDRP, the Complainant contended that the Respondent had no rights or legitimate interests in the domain name because the Respondent had not acquired any trade mark rights in the KALYAN JEWELLERS name and trade mark. The Respondent argued that the protected sign was merely a combination of two dictionary words not unique to the Complainant. In this regard, the Panel held that, while “kalyan” had a common meaning, it also had a trade mark significance as part of KALYAN JEWELLERS for the Complainant’s jewellery service.
The Complainant further argued that the Respondent had no legitimate interests and had not made a bona fide use of the domain name as (i) he registered it after the Complainant had established rights and reputation in the KALYAN JEWELLERS trade mark and (ii) it had been suspended for many years. The Respondent countered that the domain name had not been used apart from a six month period when the Respondent put up a web page offering to sell the domain name.

Under its general powers and in its discretion the Panel reviewed archival website pages for the domain name. It found that the Respondent did put the domain name up for sale for a while and that at some point there was a mock-up website with the title “Jewelry Store” at the domain name.

The Panel held that the Respondent had not done anything with the domain name in 16 years that would suggest that the Respondent was using or intended to use the domain name for a legitimate business. The Panel also found that it was more likely than not that the Respondent (or the alleged beneficial owner) was now attempting to profit from the domain name from its association with the Complainant and its trade mark. The Panel therefore held that the Complainant had made out its case under the second element.

With regard to the third element, the Complainant claimed that the Respondent was likely aware of the reputation enjoyed by the Complainant in the KALYAN JEWELLERS trade mark when the Respondent registered the domain name. The Complainant further claimed that the Respondent had been acting in bad faith by passively holding the domain name for 16 years, given that it could not be used by anyone other than the Complainant as the owner of the KALYAN JEWELLERS trade mark.

The Respondent argued that the term “kalyan” was a common term, that there were other uses of “Kalyan Jewellers” in India by third parties and that the domain name was registered in 2004 without knowledge of the Complainant’s rights.

The Panel found that the Complainant had failed to establish that the domain name had been registered and used in bad faith. The Panel recognised that “kalyan” had a common meaning. The Panel then considered that the Complainant had provided no evidence regarding its use or reputation in the KALYAN JEWELLERS trade mark on or prior to October 2004. As such it made it difficult to assess whether the Respondent was trying to take advantage of the Complainant’s rights or was merely registering a domain name based on a combination of two common terms.

The Panel explained that, while the Respondent may now want to profit from the domain name in bad faith given the reputation developed by the Complainant in the KALYAN JEWELLERS name and trade mark, it did not in and of itself prove without more evidence that the Respondent originally registered the domain name in bad faith, especially considering the common meaning of the term “kalyan”. The Panel denied the transfer but added that the Complainant remained free to pursue its claims before the courts, which would allow for a more detailed examination of the relevant facts and circumstances surrounding the use of the term “kalyan” under relevant domestic law.

The Panel concluded by refusing to make a finding of Reverse Domain Name Hijacking, considering that it was not unreasonable for the Complainant to seek action against the domain name given that it owned the KALYAN JEWELLERS trade mark in India.

This decision illustrates the importance for complainants to convincingly establish their reputation at the time of a domain name registration in order to prove bad faith. Notoriety and reputation subsequent to such registration will not suffice with regard to the third element even if the respondent subsequently engaged in bad faith use of the domain name. This case also illustrates the difficulty associated with the use of a common term, both in a domain name and in a trade mark. In this case, although the domain name was very clearly identical to the Complainant’s trade mark, it was not enough for the Panel make a finding of bad faith. The situation may have seemed like a clear cut case of cybersquatting, but the particular circumstances of the case, carefully examined by the Panel, prevented a finding in favour of the Complainant.

The decision is available here.

The UDRP may not be the appropriate forum

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 the absence of rights and legitimate interests on the part of the Respondent.

The Complainant was R. St. Barth Limited, a UK company specialising in the production and marketing of rum. It was the owner of several trade marks including a French word mark and a figurative trade mark incorporating the term R. ST. BARTH, both registered in 2010, as well as an International figurative mark incorporating the term R. ST. BARTH. The Complainant also referred to a United States figurative trade mark comprising the term R. ST. BARTH, but the evidence showed that it had been rejected and so the Panel did not take it into account. The Complainant also owned and used the domain name rhumstbarth.com to operate its business activities.

The Respondent was Olivier et Valerie Kleinhans, Island Compagnie, a company based on neighbouring Saint Martin.

Saint-Barthélemy (often referred to as “St. Barth”) is a collectivité territoriale which is the local government of a French Caribbean island.

The Respondent provided evidence of a trade mark licence agreement entered into with a company named Dussol, the exclusive licensee of the Saint-Barthélemy collectivité territoriale, granting it rights of use for a French trade mark in the term ST BARTH registered in 2011.

The disputed domain name was rhumsaintbarth.com . It was resolving to the Respondent’s website marketing rum.

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 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.

As far as the first limb was concerned, the Panel was satisfied that the Complainant had rights in the trade mark R. ST. BARTH and that the domain name incorporated the most prominent element of the Complainant’s R. ST. BARTH trade mark with the addition of a descriptive element. It found that the domain name was confusingly similar to the Complainant's trade mark. Thus the Complainant satisfied the first element set out in paragraph 4(a) of the UDRP.

Turning to the second limb and a respondent's rights or legitimate interests (or lack of them), according to section 2.1 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”), a complainant must prove that the respondent had 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 UDRP.

In the present case, the Panel found that the Respondent’s use of domain name was bona fide as it was using the latter in order to market rum in Saint Barthelemy. In addition, the Respondent provided evidence that it legitimately used the domain name on the grounds of a licence agreement concluded before the registration date of the domain name between itself and Dussol, the owner of the trade mark ST BARTH. In light of this supporting evidence, the Panel concluded that the Complainant had therefore failed to prove that the Respondent had no rights or legitimate interests in respect of the domain name and the complaint failed.

The Panel noted that the case at hand appeared to be part of a wider dispute relating to national trade mark law and business law, and found that this should be decided by a forum with appropriate jurisdiction and competence to rule on such matters.

As the three requirements of the UDRP are cumulative, the Panel did not need to go on to continue the third issue relating to bad faith registration and use.

This decision highlights the fact that a respondent may well have a legitimate interest in a disputed domain name, particularly where a trade mark may also be descriptive. It also serves as a reminder of the scope of the UDRP.

The decision (in French) is available here.

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