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Domain name industry news

Solid growth maintained in .AU

In our March issue of Anchovy News, we reported on the registration boom that followed the launch of .AU direct 2^nd level (2LD) domain names on 24 March 2022, pursuant to which Australia’s .AU country code Top Level Domain (ccTLD) grew by more than 20 per cent in 2022. The Registry has reportedly now added around 25,000 second-level .AU domains since the start of this year and had around 4.2 million .AU domains registered in total in February 2023, making it the seventh largest ccTLD and the tenth largest TLD worldwide.

By way of a reminder, auDA, the body responsible for the .AU Registry, launched a “Priority Allocation Process” for .AU direct domain name registrations on 24 March 2022. Under this, the holders of Australian third-level domain names such as .COM.AU and .NET.AU who met the strict local presence requirements had priority to apply for the corresponding domain names directly under the .AU 2LD until 20 September 2022. After this date, all names matching existing domain names registered in other extensions were released for registration by any registrant with a valid Australian presence.

In a blog post on its website to coincide with the one-year anniversary of the .AU direct launch, auDA pointed out that, prior to the introduction of .AU direct, more than 90 per cent of total registrations in the .AU name space were made by businesses, two per cent by not-for-profit organisations and only 0.4 per cent by citizens. In contrast, in March 2023, 85 per cent of new .AU direct registrations were made by businesses, nine per cent by not-for-profits and six per cent by citizens. For auDA, this demonstrates that “.AU direct supports a broader group of registrants to participate in the digital economy through .au.”

In its blog post, auDA also revealed that, although over 450,000 instances of contention had been resolved through the Priority Allocation Process, roughly 6,000 .AU domains remain unallocated because more than one registrant has staked a claim for them. These so-called “contested names” arise from a situation whereby one registrant owns the .COM.AU version of a domain name, whereas another owns the .ORG.AU or .NET.AU.

The blog post also reminded 3LD owners that they must renew their application for the matching 2LD every year or risk losing it to their rival applicant(s) and that the first renewal is due in September 2023.

It will be interesting to see whether the .AU TLD can sustain its recent growth trend throughout the rest of the year. Anchovy News will be keeping an eye on the situation.

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Re-launch of .FORUM

The new generic Top Level Domain (gTLD) .FORUM, which is run by the Registry Internet Naming Co., is currently being re-launched, with a view to making it more accessible to internet users.

As Anchovy News readers may know, last year Internet Naming Co took over nine gTLDs formerly managed by Uniregistry – .CLICK, .COUNTRY, .HELP, .FORUM, .HIV, .LOVE, .PROPERTY, .SEXY and .TRUST. The Registry is now relaunching .FORUM in order to reach a broader audience. Indeed although it has never been a restricted TLD, it was however very expensive – the cost for a domain name registration was usually in the region of $1,500. Prices have therefore been greatly reduced for this re-launch, however this will only be reflected during the last stage as there will be a high Registry application fee during the first two phases.

The re-launch schedule is as follows:

• Sunrise: 12 April – 10 May 2023

During this period, trade mark holders will be able to apply for the corresponding domain names under .FORUM. As this is a re-launch, it will not be necessary for applicants to have registered their trade marks with the Trade Mark ClearingHouse (TMCH). They will still need to pay a high Registry application fee (over $1,100) in addition to the registration fee.

• Early Access Period (EAP): 10 May – 17 May 2023

During EAP, available .FORUM domain names can be registered by anyone on a first come, first served basis, however the price will be particularly high. Although it will decrease day by day leading up to General Availability, it will remain high during the whole phase. The Registry application fee will indeed range from approximately $21,000 (EAP day 1) to $900 (EAP day 7). The registration fee will need to be paid on top.

• General Availability: 17 May 2023 onwards

As from this date, anyone will be able to register available .FORUM domain names on a first come, first served basis, at the standard (and now reduced) price, which should be in the region of $40-$50, depending on the registrar.

In addition to offering a considerable reduction in price, the Registry is also now allowing the registration of one and two-character domain names under .FORUM, which will be interesting for many internet users, although these domain names will obviously be considered premium and will be sold at a much higher price.

There appears to currently be only approximately 300 registered .FORUM domain names. This figure should increase with this re-launch, although we may not see its effects until after General Availability starts, when the TLD becomes affordable for most.

For more information on the launch of .FORUM, please contact David Taylor or Jane Seager.

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IDN World Report 2022

The IDN World Report, a research project of EURid (the Registry for .EU), UNESCO and other partners which started in 2011, covers statistics and trends within the global Internationalised Domain Name (IDN) market, with a focus on country code Top Level Domains (ccTLDs). The latest Report published provides an overview of the IDN market for the year 2022.

As Anchovy News readers will know, IDNs are domain names that contain at least one non-ASCII character – for example, a character with diacritics like é, ü, ñ, or a Chinese character like 飛. Registering IDNs is possible in most generic Top Level Domains (gTLDs) and in many ccTLDs such as Brazil (.BR), China (.CN), France (.FR), Germany (.DE) or Spain (.ES).

The IDN World Report 2022 highlights that 79% of current ccTLDs support IDN registrations and that there are an estimated 2.2 million IDN registrations under ccTLDs (and 1.4 million under gTLDs). However, the Report explains that this is only a tiny share of all domain name registrations as “when compared to the combined domain name market, estimated at 363 million domains, IDN domains represent less than 1%”, and suggests that this may be due to “how the internet has developed from Western origins predominantly in Latin script".

The Report also tackles the question of awareness around IDNs, which “needs improvement if they are to continue to be a viable option particularly for new and emerging economies.” Indeed, the Report cites a survey from 2022 in which Registries gave an average score of only 2.2 out of 5 (down from 2.6 in 2021) as to how they perceive end-user awareness of IDNs. They also rated registrar support for IDNs at an average of 3.1 out of 5 (down from 3.5 in 2021).

The authors of the Report conclude that the above mentioned figures need to get better in order to make IDNs more accessible to internet users. In addition, changes are needed to improve “adoption in software applications" in order to facilitate Universal Acceptance (UA), which ensures that all domain names including IDNs are treated equally and can be used by all Internet-enabled applications, devices and systems.

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Slow growth for .BE

DNS Belgium, the Registry responsible for maintaining the country code Top Level Domain (ccTLD) .BE (for Belgium), has recently published its annual report for 2022.

The report shows that the total number of .BE domain names has experienced slow growth last year, compared to previous years. Indeed at the end of 2022 there was a total of approximately 1,743,500 registered .BE domain names, compared with approximately 1,737,800 in 2021, which represents an increase of less than 6,000 domain names, or about 0.33%. In 2021, the growth had been 2.38%.

A decline in new domain name registrations was also observed last year, with approximately 217,500 creations, compared with approximately 251,800 in 2021. However, according to the report, this appears to be a global trend: “Whereas smaller companies accelerated digitisation during the Covid years, this stagnated in 2022. Not just domain names but internet traffic in general”. In addition, the renewal rate of .BE domain names remains high at 87,98%, showing that “the accelerated digitisation is sustainable”.

The report also provides some other statistics. Belgians continue to have faith in their national extension, which is their preferred choice for their domain names. .BE indeed has a market share of about 57 % in Belgium, with .COM being a long way back in second place with only about 17 %, and then .EU with 7%. In terms of country of origin, about 70% of .BE registrants are Belgian. Then come the Dutch with 18%, then the French with 4%.

For more information on .BE, please contact David Taylor or Jane Seager.

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Everyone loves art

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of the Domain Name at issue, finding that the Complainant had failed to prove bad faith registration on the part of the Respondent and entering a finding of Reverse Domain Name Hijacking (RNDH).

The Complainant was Le Géant des Beaux-Arts, SARL, a French company selling art supplies. The Complainant held a European Union figurative trade mark for I LOVE ART GERSTAECKER G. This trade mark was also previously registered in the United States but was cancelled in 2022.

The disputed Domain Name was iloveart.com. The Complainant claimed to have owned the Domain Name for 19 years, but had supposedly let it lapse due to a provider change. The Domain Name was acquired by the Respondent in 2022, via an auction, after the previous owner had failed to renew its registration.

The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name. The Respondent submitted a Response requesting the Panel to enter a finding of Reverse Domain Name Hijacking (RDNH).

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.

Somewhat unusually, the Panel did not address the first and second element in its ruling, choosing to focus solely on the third element. In that regard, the Panel found that the Complainant had not established that the Domain Name had been registered in bad faith.

First, the Panel underlined that merely registering domain names to resell them was not sufficient to prove bad faith. Reselling was allowed unless it could be said to breach the provisions of the UDRP. In this regard, the Panel held that the Complainant had not provided any evidence substantiating its claim that the Respondent knew of its activities and trade marks. Rather, the Panel found that the Respondent rightfully argued that the sentence "I love art" was commonly registered and used as trade marks as well as domain names and that the Complainant had failed to demonstrate its notoriety in the United States, where the Respondent was based.

Secondly, the Panel noted the lack of evidence regarding ownership of the Domain Name by the Complainant. The Complainant asserted that it had owned the Domain Name for 19 years, but submitted no substantiating evidence. Conversely, the Respondent brought forward evidence that the Domain Name had frequently changed hands and was merely redirected to a website associated with the Complainant at some point, without the Complainant being the rightful registrant at the time. The Panel held that it was therefore impossible to assess whether or not the Complainant had ever been the owner of the Domain Name and, moreover, there was nothing to support a claim of targeting in bad faith.

Finally, the Panel concluded by entering a finding of RDNH, considering that the lack of relevant evidence, combined with the fact that the Complainant was represented by counsel, were proof that the Complaint was brought in bad faith.

Once again, this decision underlines that evidence of targeting is key, especially where a domain name comprises a generic term or sentence. Registrants of such domain names should take great care not to allow them to lapse, as it is very difficult to mount a case against domainers who snap them up at auction, sometimes for significant sums, and who can plausibly assert that they have never heard of the previous registrant. The purpose of the UDRP is not to assist registrants or their agents who forget to renew their domain names.

The decision is available here.

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Respondent cruises to victory under UDRP

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of the disputed Domain Name antaracruises.com, finding that the Complainant failed to prove the absence of rights and legitimate interests of the Respondent.

The Complainant was MHG IP Holding (Singapore) PTE. LTD., a company operating many hotels and spas worldwide under the brand ANANTARA since 2000. It promoted its resorts and services through its website using the domain name anantara.com. It also held numerous trade mark registrations for ANANTARA in many jurisdictions, including Indian trade marks registered on 16 October 2021.

The Respondent was Vaibhav Vaid, Exotic Journeys Private Ltd, an Indian company offering luxury river cruises in India under the name Antara River Cruises. It applied for a logo form trade mark for ANTARA LUXURY RIVER CRUISES in India on 19 March 2020, which was still under a pending opposition filed by the Complainant in March 2021.

The disputed Domain Name was antaracruises.com, registered on 8 June 2020. It resolved to a website promoting the Respondent’s river cruises.

The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name. The Respondent submitted a Response requesting the Panel to enter a finding of Reverse Domain Name Hijacking (RDNH).

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.

When it came to the first limb, the Panel considered that the Complainant had proven ownership of numerous registered trademarks for ANANTARA. Noting that the disputed domain name consisted of the Complainant’s trade mark with the omission of the prefix “an”, the Panel was of opinion that the Complainant’s trade mark was recognisable within the disputed domain name and that the majority of the Complainant’s trade mark was reproduced in the disputed domain name. Therefore, the Panel found that the disputed domain name was confusingly similar to the Complainant’s trade mark and that the Complainant had established the first element of paragraph 4(a) of the UDRP.

Regarding the second limb, the Complainant contended that the Respondent registered and was using the disputed domain name with the intention of misleading consumers into thinking the Respondent was the Complainant or associated with the Complainant’s corporate group, which could be inferred from the slavish copying of the Complainant’s trade mark into the disputed domain name and the “logo” form of trade mark on the Respondent’s website. In the Complainant’s view, the Respondent’s use of the Domain Name was causing confusion and appropriating the goodwill of the Complainant’s trade mark, therefore it could not confer a right or legitimate interest in the disputed domain name. The Respondent claimed that “Anantara” and “antara” were ordinary dictionary words in Sanskrit and that it had adopted the term “antara” to convey a sense of the quality of its services. The Respondent further argued that it was operating in a very different field to the Complainant and that the consumers of their respective services were unlikely to be confused.

Having considered the various factors raised by the parties, the Panel accepted that the word “antara” was the prominent or distinctive feature of the disputed domain name and the “logo” form of the Respondent’s trade mark. However, despite the lack of direct evidence of the Complainant having operations or a reputation in India, there was evidence that increasingly larger numbers of people apparently from India were using the Complainant’s services. Moreover, the Complainant did have registered trade marks in India, and there seemed to be an arguable overlap between the main services offered by the parties: hotel and resort services compared to river cruises.

The Panel found that the Respondent could be characterised as operating a legitimate and substantial business. In light of the Complainant’s ongoing opposition to the Respondent’s trade mark in India, the Panel considered that it was premature to conclude that the Respondent did not have rights or legitimate interests in the disputed domain name. Therefore, the Panel found that the Complainant had failed to meet the second requirement and thus the Complaint must fail.

Given its findings under the second element, the Panel considered that it was unnecessary to address the third limb and dismissed the complaint.

The Panel concluded by declining to enter a finding of RDNH, underlining that the mere lack of success of a complaint was not itself sufficient for a finding of RDNH.

This decision illustrates that under the UDRP it is essential to prove that the registrant of a disputed domain name has no rights or legitimate interests. Complaints brought under the UDRP will fail when the lack of rights and legitimate interests of a respondent is not apparent, especially when the respondent has registered a trade mark corresponding to the domain name and uses the domain name for a substantial business, even if the complainant has filed a pending opposition. Brand owners involved in parallel trade mark proceedings would therefore be well advised to wait until such proceedings have been finally determined before considering a UDRP complaint.

The decision is available here.

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UDRP is not so simple after all

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied a UDRP Complaint for the disputed Domain Name jkdewberry.com. The decision was on the basis that the Respondent had not registered and used the Domain Name in bad faith.

The Complainant was Dewberry Engineers Inc, an American company providing engineering, architecture, real estate and emergency management services. The Complainant operated its primary business website at the domain name dewberry.com and evidenced ownership of two United States trade marks in DEWBERRY.

The Respondent was Dewberry IT, an American corporation owned by an individual, John K. Dewberry, operating in various fields such as philanthropy, horse racing, hospitality, and aircraft operation. The Respondent also owned several United States trade marks in DEWBERRY CAPITAL, THE DEWBERRY, D DEWBERRY FOUNDATION, and D DEWBERRY HOSPITALITY. There was ongoing trade mark litigation in connection with the DEWBERRY mark between the Parties.

The Respondent registered the disputed Domain Name on 5 October 2022. It resolved to a Pay-Per-Click page containing links unrelated to the Complainant's business. There was evidence that an email address associated with the disputed Domain Name had been enabled and was being used by John K. Dewberry.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements:

(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 accepted that the Complainant had trade mark rights in the DEWBERRY mark and that the Domain Name included the trade mark in its entirety preceded by the letters "jk". It was therefore confusingly similar to the trade mark in which the Complainant had rights.

The Panel did not consider the second limb in light of its analysis of the third limb. In this regard, the Panel found that the Complainant had not satisfied the third limb as it had failed to prove that the Respondent had registered and used the Domain Name in bad faith. The Panel noted that the Parties had a long history of litigation and that the Complainant had remained silent about the possible justification for the selection of the Domain Name by the Respondent such as the Respondent's own DEWBERRY marks or the name of Respondent's founder.

Furthermore, the Panel underlined that the Respondent had brought forth credible evidence that it had registered and used the Domain Name because it reflected the name of the Respondent's founder and that the Domain Name was being used for an email address. The Panel underlined that previous UDRP panels had recognized the right to register domain names corresponding to personal names of registrants and added that, although the Respondent was not technically John K. Dewberry himself, there seemed to be a connection between the Respondent and John K. Dewberry.

Therefore, the Panel found that the Complainant had failed to prove that the Respondent had registered and used the Domain Name to take unfair advantage of or otherwise abuse the Complainant's mark, and had therefore not established the third limb under paragraph 4(a) of the Policy.

This decision perhaps shines a light on the difficulties presented by the default use of privacy services, meaning that complainants are often obliged to file UDRP complaints against unknown parties. However, sometimes the disclosure of the name of the underlying registrant can significantly change the situation, but at that point it is not always easy for complainants to change course. More widespread disclosure of registrant details before a complaint is drafted (as offered by some Registries running country-code Top Level Domains upon production of justification, such as a trade mark, for example) would be welcome for brand owners.

The decision is available here.

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