Internet Governance, Domain Name and Online Brand Protection News from Hogan Lovells
This is the July/August 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 Newsletter:
- Domain name industry news
- Domain name recuperation news
For earlier Anchovy News publications, please visit our Domain Names practice page. Learn more about Anchovy® - Global Domain Name and Internet Governance here.
Domain name industry news
Brazilian Registry launches 12 new domain extensions
Registro.br, the Brazilian Registry running the country code Top Level Domain (ccTLD) .BR, has recently launched 12 new domain name extensions, consisting of five generic extensions and seven which are aimed at professionals.
There were already a large number of Brazilian extensions available, probably more than in any other country. These additions now bring the total number of extensions to the very unusual number of…140, when most countries have less than 10.
Indeed, in addition to 11 generic extensions such as .COM.BR (the main extension) or .NET.BR, there are no less than 55 "city" extensions (such as .RIO.BR, for Rio de Janeiro) and 41 "profession" extensions (such as .ADV.BR, for lawyers), as well as 33 extensions under three other categories: individuals, legal entities and universities.
Despite the vast number of options, the most popular extension by far remains .COM.BR. Registro.br is currently managing approximately 4.38 million .BR domain names, of which 4.15 million (or 95%) are registered under .COM.BR. However this figure might change slightly further to the launch, on 20 July 2020, of the following 12 extensions:
Generic:
.APP.BR (for apps)
.DEV.BR (for developers)
.LOG.BR (for transport and logistics)
.SEG.BR (for security)
.TEC.BR (for technology)
Professionals:
.BIB.BR (for librarians)
.DES.BR (for designers)
.DET.BR (for detectives)
.ENF.BR (for nurses)
.COZ.BR (for gastronomy professionals)
.GEO.BR (for geologists)
.REP.BR (commercial representatives)
The new generic extensions, in particular .APP.BR and DEV.BR, are interesting and could be good options for internet users, although like all .BR extensions, these new extensions require registrants to be based in Brazil, so the number of registrations is unlikely to rocket.
However it is worth noting that the .APP.BR extension is already doing quite well given the fact that, nearly a month after launch, it already counts 8,071 domain name registrations, which is nearly as much as .ECO.BR (9,079 registrations) which has been available since 2012. As for .DEV.BR, it currently counts 3,207 registrations.
.NL hits the six million mark
A recent article published by Stichting Internet Domeinregistratie Nederland, or SIDN, the Registry operator of the country code Top Level Domain (ccTLD) .NL (the Netherlands), indicated that the number of registered .NL domain names had reached the six million mark.
This recent, higher than expected increase was observed no doubt due to the surge in businesses switching their focus to the Internet in response to the Coronavirus crisis. "An increasing number of traders, especially in the leisure and retail sectors, have been moving online in recent months" said SIDN's CEO, Roelof Meijer, "and, because of their strong local or regional profiles, most of them opted for .NL domain names." Indeed businesses in the Netherlands, more than most countries, do tend to prefer a .NL domain name to a .COM, for example, which is the opposite of countries like the United States, where .COM is preferred to .US.
Meijer went on to state that:
"We might be a small nation, but we're big in domain names. There's one .nl domain name for every three Dutch people. You don't see numbers like that anywhere else. "
And, specifically regarding the Coronavirus effect, he noted that:
"Over the last few months, we've seen a huge increase in the number of registrations. Since the Netherlands went into 'intelligent lockdown', more than 250,000 new .nl domain names have been registered. There's never been a sharper rise."
The story of .NL started back on 1 May 1986 when the very first domain name was registered, making it the first active country code domain outside of the US. The first domain name, , was registered by the founder of .NL, Piet Beertema, who worked for the Centre for Mathematics & Informatics, the Dutch acronym for which is “CWI”. To this day the Centre continues to use the same domain name. SIDN took over the management of .NL 10 years later in 1996 and opened up the registration of .NL to everyone, as previously it had been reserved only for businesses and organisations. In terms of registration numbers this proved to be a good move as in less than a decade the number of registrations had soared to five million.
Thirty-four years later the six millionth domain name has been registered. The .NL domain is currently the fifth most popular ccTLD, and 64% of all Dutch websites use .NL as their web address. It also helps that .NL takes security very seriously both at the DNS level, by using DNSSEC-signed domain names, and also by its reactivity to cybercrime. Meijer highlighted this point when he commented that relatively few pandemic-related scam websites have appeared in the .NL namespace during the COVID-19 pandemic. He noted that: "We maintain an active watch to pick up fake webshops and move against them quickly. There was a minor uptick in detections at the start of the pandemic, but otherwise .NL hasn't seen many malicious registrations trying to exploit the crisis."
European Commission takes stock of .EU cooperation
The European Commission (EC) has released the findings of a Study designed to assess the efficacy of the practices aimed at “preventing and fighting .eu domain name registrations that are identical or confusingly similar to another rightfully recognised name.” The Study seeks, in particular, to evaluate the collaboration between the relevant EU bodies, the .EU registration procedure and the .EU Alternative Dispute Mechanism.
The EC’s “Study on evaluation of practices for combating speculative and abusive domain name registration”, the findings of which were released on 3 August 2020, set out to assess how cooperation between the .EU Registry (EURid), the European Intellectual Property Office (EUIPO) and other EU agencies was working to combat “speculative and abusive registrations of domain names, including cybersquatting, and to providing simplified administrative procedures, in particular for small and medium-sized enterprises (SMEs).”
The Study states, in its Executive Summary, that the “Internet is without doubt a facilitator for IPR infringement” and notes that some businesses, particularly SMEs, do not take action against such infringements due either to a lack of awareness of the infringement itself or of the measures available to combat it, or due to the perceived complexity of taking action. Other rightsholders, it notes, take legal action, or simply buy the domain name from the cybersquatter, among other outcomes, but the study concludes that “prevention is better than cure” and that the .EU Registry should “make further efforts to adopt preventive measures purposed at avoiding abuse, and thus reduce the need to resort to curative measures on rightsholders’ part.”
The study outlines the .EU Registry’s cooperation with the EUIPO, whereby European Union trade mark (EUTM) holders can both check at the time of filing as to whether an equivalent .EU domain exists and thereafter opt in to a service that alerts them once a .EU domain name is registered that is identical to their trade mark. The study points out, however, that other EU Member States’ trade marks are protected to the same extent as EU trade marks, but that there is no structured collaboration between the .EU Registry and these Member States’ trade mark offices. The Study, therefore, recommends that such collaboration be put in place.
The Study examined the “good practices” of the Registries of the following ccTLDs: .UK (United Kingdom), .DK (Denmark), .HU (Hungary), .BE (Belgium) and .IT (Italy) in order to come up with its recommendations for the .EU ccTLD.
With regard to registrations, the Study acknowledges that the .EU domain name registration procedure is quite simple and straightforward, but that additional preventive measures to avoid speculative and abusive registrations could be put in place. Among these recommendations are the following:
- The implementation of strict identification checks of registrants by the registrar, possibly via the use of eID (electronic identification) systems, such as is used in Denmark (.DK)
- Publication of domain name registration requests for a period of 7-10 days during which time the domain name would not be delegated and during which established rightsholders could object to the registration, similar to the system in place in Hungary (.HU)
- Cross checks in Member States’ trade mark databases for Intellectual Property Rights (IPR) matches
- Offering, directly or through the registrars, services allowing IPR holders to preventively block infringing domain name registrations
- Extending the use of predictive algorithms to speculative and abusive registrations and not just malicious registrations (e.g. spam, phishing, etc.)
With regard to the Alternative Dispute Resolution (ADR) mechanisms, the Study concluded that the .EU ADR “works as intended”, but that there is still room for improvement. Among the recommendations for improvements to make the .EU ADR “simpler, more accessible and affordable for SMEs”, are the following:
- Making available an online dispute management portal so that the procedure can be conducted online for all disputes (some ccTLDs do not provide this)
- Making the ADR procedure faster
- Reducing the filing fees for ADR procedures, especially for SMEs
- Introducing a “loser pays” mechanism to deter speculative and abusive registrations and enabling the prevailing party to recover filing costs
- Including a mediation phase for the .EU ADR procedure
- Providing for an appeal mechanism
- Providing for fast track procedures, such as the suspension of domain names by the Registry in clear typosquatting cases (like the Uniform Rapid Suspension system (URS))
If instituted, the recommendations of the Study would make the .EU ccTLD one of the least accessible to cybersquatters and IPR infringers in the world. However, certain of the measures, such as requiring eIDs and publishing registration requests for 7-10 days for objections, would likely either be difficult to put into practice, or would meet with resistance from stakeholders and registrants.
It will be interesting to see which of the recommendations contained in the Study the EC retains and which fall by the wayside. Anchovy News will, of course, be watching out for developments.
Should you require assistance with the recuperation of a .EU domain name, please contact David Taylor or Jane Seager, who are both panellists for .EU disputes.
Nominet considering auctioning expired .UK domain names
Nominet, the Registry responsible for running the United Kingdom .UK country code Top Level Domain (ccTLD), recently announced the opening of its "2020 .UK Expiring Domains Consultation". As the name suggests, this consultation deals with expiring .UK domain names and follows on from previous policy discussions on expiring domain names and "drop lists" (published information on expiring domain names) and also invites feedback on whether expired .UK domain names should be auctioned.
Currently, .UK domain names that are not renewed within 30 days of their expiry date are suspended and all services that use the domain name (for example a website or email) stop functioning. Nominet sends a suspension warning seven days before a domain name is suspended; however, it is still possible to renew the domain name during this time. If a domain name has been suspended for 60 days without being renewed, Nominet schedules its cancellation but sends one final renewal reminder 83 days after the domain name’s expiry date. The domain name is cancelled seven days later, if it has not been renewed. Once the domain name has been cancelled it is available for registration on a first-come, first-served basis.
However, subsequent to its .UK Policy Consultation in 2019, Nominet has decided to implement a more transparent process for informing registrars and the general public of when an expired domain name will become available for registration. Nominet believes that this would help people to better understand how .UK domain names expire and, in turn, how to register them. Nominet is also considering the best procedure for releasing "highly desired" domain names, especially .UK domain names that are contested, or domain names that multiple parties wish to register.
The 2020 Consultation currently comprises the following areas for consideration, namely whether domain names "should be made available for re-registration throughout the day at a specific point in time", on the basis of the time the domain name was originally registered, or whether domain names should be "released at a specified single point in time, say 2pm every day". Also under consideration is how to release the "highly desired" domain names for re-registration. The two options being proposed by Nominet are (1) an auction model with two variations, and (2) economically controlled access to expiring domains. However, Nominet does have concerns with regard to implementing an auction model as this could be perceived as "merely a way of raising funds for Nominet". According to Nominet, 0.7% of highly contested expiring domains are registered within a second of deletion and approximately 5% are registered on the same day as their cancellation.
Nominet is proposing the following two auction models:
- Option a) Ascending price auction for contested domain names
During a specific time period before the domain name is deleted, interested parties would pay a small, non-refundable fee to participate in the auction for the expired domain name they wish to register. However, if more than one party pays to register its interest, then the domain would be auctioned between them. If only one party pays a fee, then this one party will be able to register the domain name for the usual domain name registration fee.
- Option b) Sealed bid auction
During a specific time period before the domain name is deleted, interested parties would submit a private bid of the amount they are willing to pay for the domain name. If there is more than one bid, then the highest bidder wins and is liable for paying the amount they bid. If only one party submits a bid, then this one party will be able to register the domain name for the usual domain name registration fee.
In both cases, domain names that do not receive either an expression of interest fee (option a) or a sealed bid (option b), will be released via the normal mechanism.
With regard to the option (2) (economically controlled access to expiring domains), currently, registrars seek to optimise their chances of securing dropping domain names by subscribing for additional TAGs, which provide six connections to the Registry and which are free of charge. Under the proposed new policy:
- Domains would only be available via a dedicated connection for the first hour after deletion;
- To connect to the system, the registrar would be required to be a member or to have previously participated in drop catching;
- To participate, a registrar would be able to pay for batches of EPP connections (6 per batch);
- There would be a fee for each batch of connections;
- There would be a limit on the number of batches of connections a member may hold.
In putting in place the above, Nominet states that “those who wish to participate in drop catching may do so for a transparent cost.” Nominet estimates a price of approximately GBP 600 per six EPP connections with a limit of no more than 10 batches per member. The consultation states that Nominet’s analysis indicates that having more than six EPP connections would not provide any material advantage, even if all domain names were released at a single point in time.
Eleanor Bradley, MD Registry Solutions and Public Benefit at Nominet, has stated that: "Our 2019 consultation showed considerable support for a more transparent process. It also raised wider questions on the release of expired domains for which there is intense competition and interest in registering. We felt strongly that changes should only be implemented after full consideration of the whole system. Having assessed a variety of options we are now inviting stakeholder feedback on our proposals.”
Domain name recuperation news
Domain's silver jubilee doesn’t bring luck to the complainant
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (the UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a Panel refused to order the transfer of the domain name because it found that the Complainant had failed to prove that the Respondent had acted in bad faith.
Background
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 prove that the Respondent had acted in bad faith.
The Complainant was Eurisko Mobility LLC, a company based in Lebanon.
The Respondent was Flying Pigs Inc., a company based in the United States of America.
The disputed Domain Name, , was acquired by the Respondent in 1994 and was not resolving.
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 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.
Before proceeding to analyse the three requirements of the Policy, the Panel commented on the fact that the Respondent did not file a response. The Panel underlined that, while the Respondent’s failure to file a response did not automatically result in a decision in favor of the Complainant, the Panel may draw appropriate inferences from the Respondent’s default.
Identity / similarity
When it came to substantive matters and more specifically to the first limb of the UDRP, the Complainant contended that it had trademark rights in EURISKO filed in 2019 with the United States Patent and Trademark Office in class 42 in respect of "Web site development for others; Computer software development in the field of mobile applications; Video game development services". The Complainant argued that the disputed Domain Name was identical to its trademark.
The Panel found that the Domain Name was confusingly similar to the Complainant’s EURISKO trademark and thus the Complainant had satisfied the first limb. In anticipation of its findings under the other limbs of the Policy, the Panel also highlighted the fact that the registration date of the trademark didn’t play a role in the assessment of the confusing similarity under the UDRP.
Rights / legitimate interests
As far as the second requirement under the UDRP was concerned regarding the Respondent's rights or legitimate interests, the Complainant asserted that the disputed Domain Name had always been inactive and there was no evidence that the Respondent had been preparing to use it to offer goods or services. In addition, according to the Complainant, search engine results showed that the Respondent had never been commonly known by the disputed Domain Name.
In light of its findings under the third limb of the Policy, the Panel did not comment on the eventual existence of the Respondent's rights or legitimate interests.
Bad faith
Turning to the third limb of the Policy, the Complainant asserted that the registration of the disputed Domain Name prevented it from reflecting its mark in a corresponding ".COM" domain name. Moreover, the Complainant claimed that the Respondent should be considered to have registered and used the disputed Domain Name in bad faith because "the Respondent did not reply to any of the domain backorder attempts made by the Registrar".
The Panel first noted that the disputed Domain Name was registered 25 years before the Complainant obtained trademark rights in the term EURISKO. Furthermore, the Panel stated that it had difficulty with the assessment of the Complainant’s rights given that, beyond the existence of the EURISKO trademark, the Complainant had not submitted any information about its company or activities. As a consequence, the Panel was obliged to deduce the Complainant’s rights based solely on the trademark certificate, which stated that the Complainant claimed first use in commerce in 2019. In such circumstances, the Panel found that there was no evidence suggesting that the Respondent registered the disputed Domain Name with knowledge of the Complainant’s rights. The Panel therefore made a finding that the Complainant had failed to prove that the Respondent registered the disputed Domain Name in bad faith. Moreover, the Panel noted that the use of the disputed Domain Name had no influence on the outcome of the decision given that the Complainant had to prove both (i) registration and (i) use of the disputed Domain Name in bad faith in order to succeed. In any case, the Panel underlined that a registrant who had legitimately registered a domain name was, as a general rule, not obliged to use it in any particular manner.
The Panel also disagreed with the Complainant's statement that the Respondent acted in bad faith because it "did not reply to any of the domain backorder attempts made by the Registrar". In addition, the Panel added that, even assuming that these attempts, which were not completely clear to the Panel, came to the attention of the Respondent, the Respondent was under no particular obligation to react to them.
In light of the above, the Panel made a finding that the Complainant had failed to demonstrate the requirements prescribed by the third limb of the Policy and so the Panel refused the transfer of the Domain Name.
Finally, the Panel also considered whether a finding of reverse domain name hijacking ("RDNH") was appropriate. RDNH is defined in paragraph 1 of the UDRP Rules as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name". In this case, the Panel considered that the Complaint was seriously inadequate and was doomed to failure. However, given that the Complainant was self-represented, the Panel concluded that the Complaint was likely not a result of intentional misconduct but rather lack of understanding of the Policy. As such, the Panel stated that a finding of RDNH was not necessary.
Comment
This decision once again illustrates that complainants should think seriously about bringing a complaint under the UDRP when the date that the respondent acquired the domain name pre-dates the complainant's trademark rights. In fact, panelists are reluctant to find bad faith where a domain name was registered before the complainant acquired trademark rights. The exceptions to this rule usually include registration of a domain name: (i) shortly before or after announcement of a corporate merger, (ii) further to the respondent’s insider knowledge, (iii) further to significant media attention, or (iv) following the complainant’s filing of a trademark application (provided of course that the complainant is able to evidence registered or unregistered trademark rights at the time that the complaint is filed).
Coincidental similarity is not typosquatting
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, finding amongst other things that the similarity of the domain name to the Complainant’s trademark was merely coincidental.
Background
The Complainant was Truworths Ltd, a large fashion and related accessories retailer based in South Africa, with hundreds of branded stores in South Africa and other African countries. The Complainant owned various registered trade marks for TRUWORTHS, the earliest of which was filed in 1945 in South Africa. It also registered the domain name in 1996, and had been pointing it to its online retail store since at least 2001.
The Respondent was Saichao Dong, an individual based in the United States.
The Domain Name was , registered in December 2019. It pointed to a website in Chinese offering betting and gambling activities.
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 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.
Identity / similarity
As far as the first limb was concerned, the Complainant contended that the Domain Name was confusingly similar to its TRUWORTHS trademark. In the absence of any response from the Respondent, the Panel found that the addition of the letter "e" into what was in substance the Complainant’s trademark could not prevent a finding of confusing similarity. The first limb was therefore satisfied.
Rights / legitimate interests
With regard to the second limb, the Complainant claimed that the Respondent’s use of the Domain Name, i.e. pointing to a website providing online betting and gambling services, was illegal in China given that, further to its message sent to the then-current registrar of the Domain Name prior to the filing of the Complaint, the Chinese registrar suspended the Domain Name due to its use in relation to betting services. The Complainant therefore asserted that the Respondent’s illegal activities could not confer a legitimate interest.
Although the Respondent did not provide any response, the Panel considered that its offering of gambling services may not specifically target internet users based in China, where such activities were deemed to be illegal, but all readers of Chinese around the world. Furthermore, the Panel pointed out that it did not need to reach a conclusion under this limb in view of its findings with regard to bad faith under the third limb.
Bad faith
As far as the third limb was concerned, the Complainant first asserted that the Respondent was engaged in typosquatting, having registered almost 3,000 domain names, many of which incorporated well-known third party trademarks.
Based on the evidence provided by the Complainant, the Panel noted that the vast majority of these domain names consisted of character strings which did not have any apparent obvious linguistic meaning or significance, at least to the best of the Panel’s knowledge, and that all these domain names were used to point to websites in Chinese offering betting-related services. Although the Complainant had identified four domain names incorporating well-known third party trademarks, the Panel was not convinced that four examples out of 3,000 domain names were sufficient to establish a pattern in this regard. In the Panel’s view, it seemed more likely than not that the Respondent was engaged in simply acquiring domain names that happened to be available and then linking them to his Chinese language gambling websites. The Panel did not know how the Respondent selected the domain names and assumed that he may use some form of automated algorithm. In the absence of any details regarding the registration of these domain names, the Panel considered that it would not be safe to derive any wider inference of bad faith simply on the basis of the four trademark-abusive domain names.
The Complainant also claimed that the Respondent used the Domain Name, which was confusingly similar to its trademark, to attract customers for financial gain.
In the Panel’s opinion, although the Domain Name could be a typographical variant of the Complainant’s trademark, it could also be considered to combine two ordinary words (i.e. "true" and "worths"). Based on the Respondent’s random selection of domain names as described above, it seemed to the Panel that the fact that the Domain Name was a typographical variation of the Complainant’s trademark may be entirely coincidental, and thus there was no intent to divert customers from the Complainant to the Respondent. While the Panel accepted that the Domain Name could well be mis-entered or conceivably mis-remembered by persons seeking the Complainant’s website, the Panel was not convinced that this was part of a deliberate strategy on the part of the Respondent to trade on the Complainant’s reputation and goodwill since it was unlikely that people seeking a South African fashion retailer would have any interest in a Chinese gambling site that they had arrived at by mistake.
Taking the evidence as a whole, the Panel concluded that there was no basis for a finding of bad faith unless further factors suggested otherwise. In this regard, the Panel continued to examine three additional factors on which the Complainant relied.
The Complainant first claimed that this was a case of "cyber flight", given that the Respondent changed the registrar shortly after the Domain Name was suspended by the registrar previously contacted by the Complainant. It also referred to the false contact details provided by the Respondent and the Respondent's failure to respond to correspondence as evidence of bad faith.
The Panel accepted that these circumstances could in appropriate situations support a finding of bad faith. However, in this case, it seemed to the Panel that the Respondent’s actions in changing registrar and in providing false contact details were more likely to be motivated by obscuring / avoiding his involvement in potentially unlawful activity in China, rather than any bad faith intent against the Complainant. Similarly, the Respondent’s failure to respond to the Complainant’s correspondence was not sufficient on its own to support a finding of bad faith.
Finally, with regard to the duty of "high volume" registrants to avoid trademark infringement, as asserted by the Complainant, the Panel found that, even if the Respondent was somehow subject to this duty, it was not clear that his activities would amount to bad faith given the nature of the domain name registrations as analysed above.
In view of this, the third limb was not satisfied and the Complaint was denied.
Comment
This decision makes for interesting reading in that the Panel, when faced with a relatively well-known trademark and a domain name that appeared to be a typographical variant of that mark associated with a commercial website, did not make a cursory finding that the registrant was clearly taking unfair advantage of the reputation attached to the trademark and order transfer of the disputed domain name. On the contrary, the Panel carefully analysed the facts and surrounding circumstances and concluded that the similarity between the domain name and the trademark was likely to be purely coincidental, thereby excluding typosquatting. Trademark owners should therefore take note that obtaining a transfer under the UDRP is perhaps not as easy as it may seem in certain more complex scenarios.
No glow for complainant
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 , finding that the Complainant had failed to prove that the Domain Name had been registered and used in bad faith.
Background
The Complainant was Bump Boxes Inc., a United States company selling organic cosmetics and non-medicated organic skin care preparations. The Complainant registered the trade mark GLOW ORGANICS with the United States Patent and Trademark Office in 2017.
The Respondent was Amber Beauty, Glow Organics LLC, a United States company that registered the Domain Name in January 2020. The Domain Name was pointing to a website branded "Glow Organics, LLC" which appeared to be selling skin care products.
The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name. The Respondent did not reply.
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 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.
Identity / similarity
Under the first element of paragraph 4(a) of the UDRP, the Complainant considered that the Domain Name was confusingly similar to its trade mark. The Complainant argued that it had enjoyed extensive rights from use of its trademark in the United States and throughout the world since 2016 and that the trademark priority date predated the registration of the Domain Name, meaning that its use of the trademark had to predate the Respondent's use.
The Complainant added that (i) the trademark was encompassed in the Domain Name, (ii) the Domain Name did not need to be identical under the first element but could alternatively be confusingly similar and that one had to consider all of the surrounding circumstances and what would likely happen if the trademark were used in a normal way as a mark for goods, (iii) the Domain Name differed from the trademark by adding the word "shop" and the generic top-level domain ".com" and that the trademark was recognisable within the Domain Name and constituted the predominate element, therefore adding the word "shop" did not avoid a finding of confusing similarity.
The Complainant further stated that it could be considered that the parties operated in the same industry, which suggested confusing similarity as the goods and services covered by the GLOW ORGANICS trademark mirrored those offered on the website linked to the Domain Name.
The Panel held that the Complainant had successfully established that the Domain Name was confusingly similar to its trademark.
The Panel found that the Complainant had established trademark rights, based on its trademark registration in the United States. The Panel further explained the confusing similarity by noting that the fact (i) that the Domain Name added the descriptive term "shop", placing it before two words that comprised the Complainant's trademark and (ii) that the generic top-level domain ".com" was used, did not alter the interpretation of Section 1.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), which provides that:
"[w]here the relevant trademark is recognizable within the disputed domain name, the addition of other terms (whether descriptive, geographical, pejorative, meaningless, or otherwise) would not prevent a finding of confusing similarity under the first element. The nature of such additional term(s) may however bear on assessment of the second and third elements". The Panel noted that the WIPO Overview 3.0 had been interpreted in Knoll, Inc. v. Identity Protection Service / Jeroen Goddijn, Furniture24, WIPO Case No. D2019-3071, where the panel had determined that the addition of the words “shop” and “chair” could not overcome a finding of confusing similarity in the disputed domain name .
Rights / legitimate interests
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 chosen to hide its identity when registering the Domain Name and thus the Respondent could not be said to be "commonly known" by the Domain Name. The Complainant also argued that any supposed bona fide use of the name "glow organics" had not been made by the Respondent before registration of the Domain Name. The Complainant added that, to be "commonly known" meant that the person or entity in whose name the domain name was registered should have been effectively known by that name by third parties before the moment of registration of the domain name, which was not the case because the Domain Name was registered in 2020.
The Complainant further argued that the use of the Domain Name was not in good faith and that its registration intended to confuse consumers and redirect them to the Respondent's competing products because (i) the Complainant had continually used the GLOW ORGANICS trademark and had had its registration in place for years before registration of the Domain Name, (ii) the Complainant was recognised by the public and in the industry as the sole source of the relevant goods and services under the trademark, whereas the Respondent had not been licensed by the Complainant to use the mark, (iii) the Respondent's apparent first use of the Domain Name had not begun until late 2020 and the Domain Name was linked to a website offering products that competed with the Complainant and therefore the Domain Name infringed on the Complainant's rights and its use was unlawful, irrespective of the lawfulness of the Respondent's business, (iv) the Respondent's use of its website did not constitute a good faith offering because the Respondent used the Domain Name to sell competing goods and if a domain name was registered in bad faith, a respondent could not have rights or legitimate interests in the domain name, and (v) the Complainant had a recognised reputation, as shown by its trademark registration. The Complainant concluded that, given the similarity in products and services, it was not conceivable that the Respondent did not know of the Complainant's rights in the GLOW ORGANICS trademark. Mere use of the Domain Name did not suffice to show good faith use.
The Panel held that the Complainant had made a prima facie case whilst the Respondent had failed to reply to the Complainant's contentions. The Panel explained that (i) it was clear that the Complainant had not licensed or authorised the Respondent to use the trademark (ii) the limited evidence indicated that the Domain Name was not used for a legitimate non-commercial or fair use; instead it was linked to a website that appeared to be selling beauty and skin care products which competed with products offered by the Complainant, and (iii) the Respondent had made no claim to be commonly known by the Domain Name and the registrar had confirmed that the registrant was listed as "Amber Beauty", with an organisation name listed as "Glow Organics, LLC", which was also the brand used on the Respondent's website.
The Panel then indicated that the prima facie case made by the Complainant had not been rebutted by the Respondent who had not submitted a response.
Bad faith
With regard to the third element, the Complainant claimed that the Respondent had intentionally sought to attract, for commercial gain, internet users to its website by creating a likelihood of confusion with the Complainant's trademark about the source, sponsorship, affiliation or endorsement of its website or business and that only an attempt, not success, was necessary to satisfy the requirements of the third element.
The Complainant added that, at best, the Respondent had registered the Domain Name with a reckless disregard for its obligations under paragraph 2 of the UDRP and, at worst, it purposefully chose to register the Domain Name to play off the Complainant's rights and sought to cause confusion as to the source, sponsorship or affiliation of the Respondent's products and services. The Complainant interpreted paragraph 2 of the UDRP as an ongoing warranty that a domain name would not be used in bad faith.
The Panel found that the Complainant had failed to establish that the Domain Name had been registered and used in bad faith. The Panel considered that the Complainant had provided no evidence that it had accrued goodwill or recognition associated with its trademark such that it could be easily inferred that the Respondent had targeted the Complainant and its trademark or should have known of the Complainant's trademark. The Panel explained that a single trademark registration in 2017 did not, in itself, provide the required evidence.
The Panel also pointed out that there was insufficient evidence to establish whether the Respondent was taking unfair advantage of or was otherwise abusing the Complainant's mark. On the one hand, the Complainant had not provided evidence regarding its own business and the products it offered. The Panel, after conducting research on the Complainant's website, found that that the site appeared to be branded "Bump Boxes" and that it was offering safe products for pregnant women, some of which were branded "Glow Organics 9", along with others carrying different branding. The Panel also found a website located at "www.gloworganics.co" (with the same postal address as the Complainant's) which appeared to carry some of the products that were offered on the Bump Boxes website, including products dedicated to pregnant women. On the other hand, the Panel observed that the Respondent's website did not attempt to impersonate the Complainant's website and that the terms "glow organics" appeared to be somewhat suggestive or descriptive of the products offered by the Respondent and had been used for other online offerings by third parties (the Panel listed various examples of third party use). Regarding the Complainant's argument that there was an ongoing warranty that a domain name would not be used in bad faith, the Panel noted that in accordance with section 3.1 of the WIPO Overview 3.0, the main point was that "bad faith under the UDRP is broadly understood to occur where a respondent takes unfair advantage of or otherwise abuses a complainant's mark" and concluded that, in view of the surrounding circumstances, the Complainant had failed to establish, on balance, that the Respondent had engaged in such conduct. The Complaint was therefore denied.
The Panel concluded that the Complainant remained free to pursue its claims before courts (including as to possible trade mark infringement, dilution or tarnishment), which would allow for a more detailed examination of the relevant facts and circumstances under relevant domestic law.
Complaint fails by "a large margin"
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 , entering a finding of Reverse Domain Name Hijacking (RDNH).
Background
The Complainant, Agencias Universales S.A., was a Chilean group of over 100 companies, established in 1960, providing shipping, transport and other logistical services. The Complainant had come to be known as "GEN" – an abbreviation for "Grupo de Empresas Navieras" (Spanish for "group of shipping companies"). The Complainant had registered Chilean trademarks for GEN GROUP and GRUPO GEN, dating from 2 February 2006. The Complainant also owned the domain name .
The disputed domain name was first registered on 25 April 1996. In 1998, the company Global Education Network, Inc. was incorporated in the United States. In 2000, Global Education Network, Inc. applied for a trademark for "GEN.COM", which was later abandoned. The same year, Global Education Network, Inc. changed its name to "Allen Technology, Inc.". In 2001, the Respondent Jeff Williams was appointed as the Chief Technology Officer of a related company called "Allen & Company, Inc.". In 2001, the disputed domain name resolved to a website branded "GEN.COM. Global Education Network" displaying details about online courses. In 2004, Allen Technology, Inc. ceased trading. In 2008, the disputed domain name continued to resolve to a website branded "Global Education Network" with information about online distance learning. In 2014, the disputed domain name changed to being registered in the name of a privacy service.
Identity / similarity and Rights / legitimate interests
The Complainant claimed that the disputed domain name was identical to the distinctive part of its trademark, as the word "group" was a descriptive term. The Complainant submitted that there was no evidence that the Respondent had ever used the disputed domain name, which could not confer any rights or legitimate interests in the disputed domain name on the Respondent. With regard to bad faith, the Complainant argued that the Respondent's use of a privacy service indicated that the Respondent wanted to remain unknown to the public, and did not want to be known as someone who owns domain names to sell them or to prevent third parties from making legitimate use of such domain names. While the Complainant acknowledged that it could not prove that the Respondent registered the disputed domain name to prevent the Complainant from reflecting its trademark in a corresponding domain name, it asserted that the Respondent's apparent lack of use of the disputed domain name gave rise to the impression that the Respondent had registered the disputed domain name in order to prevent others from making legitimate use of it.
The Respondent claimed that the disputed domain name was not confusingly similar to the Complainant's trademarks. The Respondent asserted rights and legitimate interests in the disputed domain name on the basis that it had registered the disputed domain name in 2001 in order to provide online distance-learning services, that it had entered into a partnership with Public Broadcasting Services to do so, but that it shut down its services in late 2004 as at that time the Internet was not of a nature to adequately support the Respondent's services. The Respondent claimed to have a continued legitimate interest in the disputed domain name in order to offer educational services in the United States. The Respondent further noted that the disputed domain name was registered some five years before the Complainant's earliest registered trademarks, and argued that the Complainant had provided no evidence of registration and use in bad faith. The Respondent submitted that the Complainant's assertions were unsupported in evidence, lacking merit and factual basis, and were made without carrying out any basic diligence. The Respondent asserted that its use of a privacy service was legitimately aimed at avoiding unsolicited email advertising.
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 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.
Under paragraph 4(a)(i) of the UDRP, the Panel found that the disputed domain name was confusingly similar to the dominant feature of the Complainant's trademarks – the term "GEN".
The Panel refrained from entering a finding under paragraph 4(a)(ii) of the Policy, as the Complaint would go on to fail under the third element.
Bad faith
Under paragraph 4(a)(iii) of the UDRP, the Panel noted that the Complainant had not provided evidence of when it had started using the name "GEN", or of its reputation in the name, and that the Complainant's earliest trademark dated from 2006, some five years later than the registration of the disputed domain name. The Panel noted that the Complainant faced a near-impossible task of establishing registration in bad faith, whereas the Respondent had evidenced its intent to register the disputed domain name in order to promote online-education services under the company name "Global Education Network". The Respondent therefore possessed a legitimate reason to have registered the disputed domain name, corresponding to an acronym of the entity through which it promoted its services. In addition, there was no evidence to show that the disputed domain name had been used in any way to target the Complainant.
In entering a finding of RDNH, the Panel found that the Complaint had fallen well short of the standard of evidence required to prove that the disputed domain name was registered in bad faith, noting that it should have been apparent to the Complainant that a domain name composed of three letters could easily correspond to an acronym or dictionary word, and that the Complainant had not adequately considered whether there was any real evidence that the disputed domain name was registered with the Complainant's trademark in mind. The Panel found that the Complainant had put forward a number of contrived arguments, falling well short of proving bad faith.
Comment
The above case presents a number of important considerations for complainants considering filing a UDRP complaint. First is the importance of a frank and objective appraisal of the strength of one's case at the outset. While rights or legitimate interests are typically considered at the time of filing, considerations as to bad faith will often be influenced by prior use of a domain name, of which complainants can become informed through consultation of publicly-available resources, including the Wayback Machine available at www.archive.org. Secondly, in passive-holding cases where a disputed domain name is composed of an acronym or a dictionary term, complainants will often be held to a higher standard to produce evidence from which an inference of targeting can be drawn, compared to instances where a complainant's trademark is inherently distinctive. Thirdly, in the absence of additional factors, such as clear evidence of targeting, or the provision of false or misleading underlying registrant details in an effort to evade identification by trademark owners or interested third parties, the use of a privacy service may be considered legitimate and will not necessarily amount to evidence of bad faith per se.
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