Anchovy News, July / August 2021

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This is the July/August 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

  • EURid extends citizenship criteria and gives a last chance to UK registrants
  • auDA imposes ring of steel around Olympic domains
  • 17th million German domain name registered

DOMAIN NAME RECUPERATION NEWS

  • Legitimate interests in a domain name consisting of an acronym
  • Not everyone on the internet uses aliases
  • Requirement to prove absence of rights or legitimate interests not met in .IO case

Newsletter sections:

For earlier Anchovy News publications, please visit our Domain Names practice page. Learn more about Anchovy® - Global Domain Name and Internet Governance here.

Domain name industry news

EURid extends citizenship criteria and gives a last chance to UK registrants

EURid, the Registry for the .EU Top Level Domain (TLD), has recently updated its registration rules in order to enable expats from three additional countries to register .EU domain names. EURid also announced that holders of Brexit-related domain names still have a chance to recover them.

As Anchovy News readers will know, only eligible entities can generally register .EU domain names, that is to say companies, organisations and individuals that are based in the European Economic Area (EEA). The EEA includes the 27 countries of the European Union (EU) as well as Iceland, Liechtenstein and Norway.

In October 2019, EURid also enabled EU expats to register .EU domain names. Almost two years later, on 2 August 2021, EURid extended the eligibility criteria to internationally-based citizens of Iceland, Liechtenstein and Norway as well. .EU domain names are now available to all entities that are established in the EEA and to all individuals who are either citizens or residents of the EEA.

This rule of course also applies to domain name registrations under the .EU variants in other scripts that are run by EURid, that is to say .ею (.EU in Cyrillic) and .ευ (.EU in Greek).

In a recent publication, EURid also announced that Brexit-related withdrawn domain names could still be recovered until 31 December 2021. As frequently reported in Anchovy News, the Registry put into place a transition period in order to enable UK registrants to demonstrate their compliance with the eligibility criteria and thus keep their .EU domain names. They could do so by indicating a legally established entity in one of the eligible Member States, or updating their residence to a Member State, or proving their citizenship of a Member State.

All registrants who did not demonstrate their compliance by the given deadline saw their domain names move to a “suspended” status on 1 January 2021, meaning that the domain names could no longer support any service, but could still be reinstated if the registration data was updated to meet the eligibility criteria by 30 June 2021. On 1 July 2021, the domain names that were still non-compliant moved to a “withdrawn” status (meaning that they could not function and were no longer in the .EU zone file) and will remain in that state until their deletion by EURid.

However EURid is now giving holders of such domain names a last chance to keep their domain names by extending the deadline. Thus all UK registrants who can prove their compliance and have not done so yet must now contact EURid directly by 31 December 2021 before the domain names enter a deletion state on 1 January 2022.

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auDA imposes ring of steel around Olympic domains

When, in late July of this year, the venue for the 2032 Olympics was announced as Brisbane, Australia, it caused a flurry of .AU domain name registrations containing Olympic-related terms. auDA (the .au Domain Administration Limited) was quick to point out, however, that there were mechanisms in place to prevent such registrations.

In a blog post entitled “.au reserved names… why can't I register that domain name?”, auDA noted that, on the day the Olympic bid was confirmed, Brisbane entered the top five trending Google searches in Australia. Concurrently, auDA said it saw an increase in the registration of domain names containing the word (or variations of the word) ‘Olympics’. It pointed out that many of these registrations were not eligible for registration as the relevant terms have been reserved.

As auDA explains in its post, reserved domain names are only available for registrations in certain circumstances according to strict criteria outlined in Section 2.6 of the .au Licensing Rules. Under these rules, there are three main reasons for a domain name to be listed as a reserved name:

- it contains a word, acronym or abbreviation that is restricted or prohibited under an Australian law

- it is a name or abbreviation of an Australian state or territory, including the word ‘Australia’

- it may pose a risk to the security, stability and integrity of the .au and global Domain Name System.

auDA points to the fact that the Olympic Insignia Protection Act 1987 restricts the public registration of domain names for commercial purposes that include the word “Olympic, “Olympics”, “Olympic Games”, “Olympiad” and “Olympiads.

According to auDA’s Licensing Rules, domain names on the reserved list can only be registered if the registrant:

- is the statutory authority that the name has been restricted for,

- has Ministerial consent to use the name, or

- is not captured by the relevant prohibition or law.

In the case of the Olympics, auDA notes that the Australian Olympic Committee (AOC) is the “only organisation that is freely able to register ‘Olympic’ related .au domains allowing the public to be sure they are interacting with a trusted and official source of Olympic information.”

auDA’s policy goes beyond that of the gTLDs, for example, which, in line with their Registry agreements with ICANN, block only exact matches of the above mentioned strings, as it also prevents the registration of variants, such as brisbaneolympics2032.com.au. So, Olympics fans in Australia will need to find other ways of expressing their Olympic fervour than via their domain names.

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17 millionth German domain name registered

DENIC, the Registry responsible for running the .DE country code Top Level Domain (ccTLD), recently announced the registration of the 17 millionth .DE domain name.

The 17 millionth domain name, melba-stoffkreation.de, was registered on 13 July 2021. According to DENIC, the registrant of the domain name, Melanie Baumgardt, is intending to create an online shop dedicated to “creating individual gifts”. The German domain name term is related to ‘fabric creation’ and Ms Baumgardt stated that “handicrafts, especially embroidery and sewing, have always fascinated me" and “with my new website I can now present myself even more professionally online – true to my own ideas."

The .DE country code for Germany was entered into the IANA (Internet Assigned Numbers Authority) database in 1986. Then at the end of 1996 the DENIC cooperative was created by 37 German Internet Service Providers and, by this time, there were approximately 50,000 .DE domain names registered. Within three years the number of registered .DE domain names had increased substantially, so that by 1999 there were some 1 million .DE domain names registered.

According to DENIC, approximately 30,000 .DE domain names are registered every month and .DE appears to be the extension of choice for “private individuals, self-employed persons, medium-sized companies or international groups that are active in Germany”, with almost one in five German citizens owning a .DE domain name. Moreover, the .DE extension is also popular among individuals and companies not based in Germany, as approximately 1.5 million .DE are registered and held by registrants who reside outside of the country. By any standards, these figures are impressive and there appears to be little stopping the growth in the number of .DE domain names.

To visit DENIC click here.

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Domain name recuperation news

Legitimate interests in a domain name consisting of an acronym

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 that could potentially have been a typosquat of the Complainant’s long-standing trademark but was in fact an acronym of the Respondent’s company name.

The Complainant was Maharishi Foundation USA, Inc, based in the United States, which had been engaged in providing and promoting courses and seminars on personal development since 1966. It had continuously used its US trademark in the term TM, standing for “Transcendental Meditation”, registered in 1975, in connection with its educational services and operated a website at www.tm.org for the purpose of its business.

The Respondent was Matthew Ward, an individual based in the United Kingdom, who was the founder and director of a social enterprise entitled “Working With The Mind”, abbreviated to “WWTM”, which was aimed at providing mindfulness practices and approaches to support local communities.

The Domain Name wwtm.org was registered by the Respondent in May 2020. It pointed to the Respondent’s website promoting his social enterprise and soliciting donations.

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 trademark 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 wwtm.org was nothing but a typosquatted version of its web address www.tm.org (the final “w” and the full stop were omitted). The Respondent countered that that the Domain Name was merely an acronym of “Working With The Mind” without incorporating the Complainant’s TM trademark and that the proper comparison in this case should be between www.tm.org and www.wwtm.org.

According to the Panel, since the Complainant had established its trademark rights in the term TM, the fact that the Domain Name incorporated this term made it confusingly similar to the Complainant’s trademark under the UDRP. This finding was not surprising to the extent that the first requirement functions primarily as a standing requirement and the threshold is therefore relatively low.

With regard to the second limb, the Complainant claimed that its TM trademark had acquired reputation and goodwill worldwide as a result of more than fifty years of using, advertising and promoting courses and seminars on personal development. Therefore, the Respondent’s use of the Domain Name to promote competing educational services related to “mindfulness” meditation could not constitute bona fide use as the Respondent was clearly attempting to attract consumers to his website by trading on the fame of the Complainant’s TM trademark. The Respondent insisted that he had a legitimate interest in using the Domain Name as it was merely an acronym for “Working With The Mind”, and underlined that he had no intent to use the Complainant’s trademark as he was not providing similar services.

The Panel considered that the Complainant’s contentions could establish a prima facie case against the Respondent, without taking into account the arguments and evidence put forward by him. However, after having assessed the evidence provided by the Respondent, notably with regard to the actual operations of his social enterprise, the Panel found that the Domain Name was genuinely used in connection with the Respondent’s business under the name of “Working With The Mind” and that there was nothing to indicate that the Respondent registered or used the Domain Name with the Complainant in mind or to take unfair advantage of the reputation attached to its TM trademark. The Panel therefore held that the Respondent had a bona fide offering of services. The second limb was therefore not satisfied and the Complaint was denied.

For the sake of completeness, the Panel continued to examine the third requirement under the Policy. As far as the third limb was concerned, the Complainant argued that the Respondent’s registration and use of the Domain Name was simply a case of typosquatting and was intended to derive revenue from Internet users who inadvertently omitted the final “w” and the full stop when typing the Complainant’s own web address www.tm.org. The Respondent claimed that he was unaware of the Complainant and its TM trademark at the time of registration of the Domain Name since there was no trademark for the term WWTM registered in the UK where he was based. He therefore did not select the Domain Name to target the Complainant.

The Panel agreed that no evidence suggested that the Respondent registered the Domain Name with prior knowledge of the Complainant or its TM trademark. The Complainant was based in the United States and did not provide any evidence relating to its reputation in the UK. Furthermore, the Complainant’s TM trademark only consisted of two letters and it was highly unlikely that the Respondent incorporated these two letters in the Domain Name with reference to “transcendental meditation”. Finally, the legal name of the Respondent’s social enterprise, “Working With The Mind”, based on which the Domain Name was composed, appeared to be a believable and appropriate name given the nature of the Respondent’s activities (i.e., using UK accredited mindfulness practices and approaches to help local people find a way to work with their minds) and was not asserted by the Complainant to be a ruse or sham. In this context, the Panel did not accept that the Domain Name was registered and used for typosquatting purposes. Therefore the third requirement was not satisfied.

At the Respondent’s request, the Panel also assessed whether the Complaint was brought in an attempt at Reverse Domain Name Hijacking (RDNH), defined under the Rules as “using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name.” In this sense, the Respondent argued that the Complaint only focused on the Complainant’s rights and did not consider his actual conduct to the extent that the allegations in the Complaint were made without proof. Based on the evidence presented in the Complaint, the Panel could not conclude that the Respondent chose the Domain Name to target the Complainant. The Complainant had no reasonable basis to assert in the Complaint that nothing on the Respondent’s website suggested a reason to adopt the WWTM name. The Panel therefore found that the Complainant was guilty of RDNH.

This decision constitutes a good example of how a respondent can establish its rights or legitimate interests in a domain name comprised of an acronym. As highlighted in Section 2.10.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions (WIPO Overview 3.0), in this scenario, a respondent’s evidence supporting its explanation for its registration or any use of the domain name should indicate “a credible and legitimate intent which does not capitalize on the reputation and goodwill inherent in the complainant’s mark”. In the event that such evidence is sufficiently and credibly submitted, mere assertions that the disputed domain name looks confusingly similar to the trademark in question and that the complainant is somehow well-known are not sufficient to support a finding of targeting, which constitutes the basis of a respondent’s bad faith under the UDRP.

The decision is available here.

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Not everyone on the internet uses aliases

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel refused to order the transfer of a domain name that exactly matched a complainant's trademark because the complainant failed to prove that the respondent had no rights or legitimate interests in the disputed domain name and registered and used it in bad faith.

The Complainant was Borum A/S, a Danish company that supplied machinery, tools, software, and vehicles for line markings and roads, as well as other related products.

The Respondent was Thomas A. Borum, D.V.M., an individual based in the United States of America, who did not submit a response.

The disputed domain name borum.com was originally created in 1998 and the underlying registrant information was updated in December 2017. The exact date when the Respondent acquired the disputed domain name was not certain. It was not resolving to an active website.

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.

With regard to the first limb, the Complainant contended that the disputed domain name was identical to the BORUM mark in which it owned rights in the European Union since May 2019 and in the United States since August 2020. The Panel stated that the Complainant had established that it had rights in the term BORUM by virtue of its trademark registrations and found that the disputed domain name was indeed identical to Complainant’s mark. As a consequence, the Panel concluded that the Complainant had satisfied the first limb.

As far as the second requirement under the UDRP was concerned regarding the Respondent's rights or legitimate interests, the Complainant pointed out that the Respondent was not associated with the Complainant or authorised to use the Complainant’s mark. The Complainant also asserted that the disputed domain name was inactive and so there was no evidence that the Respondent used it in connection with a bona fide offering of goods and/or services. Moreover, the Complainant also submitted that it was unable to find any registered rights in the term BORUM or similar that were owned by the Respondent. Finally, according to the Complainant, the Respondent’s name in the WhoIs record may in fact have been an alias used to match the disputed domain name.

The Panel disagreed with the Complainant and noted that it was perfectly feasible that the Respondent, “Thomas Borum D.V.M.” registered the disputed domain name for the purposes of a website in his own name relating to his business as a veterinarian, as suggested by the abbreviation “D.M.V.” standing for “doctor of veterinary medicine”. The Panel underlined that the Respondent had registered the disputed domain name at least 17 months before the earliest of the registered trademark rights relied upon by the Complainant, and possibly much earlier than that. In addition, the Panel noted that the Parties were based in different countries. As such, the Panel concluded that there was no evidence that the Respondent acted with a view to trading off any goodwill or reputation attaching to the Complainant’s rights. Therefore, the Panel found that the Complainant had failed to demonstrate that the Respondent lacked rights or legitimate interests in the disputed domain name.

Given its findings under the second requirement of the Policy, it was not necessary for the Panel to assess the Complainant’s arguments under the third limb of the Policy, but the Panel proceeded for the sake of completeness.

Turning to the third requirement, the Complainant asserted that it was for the Respondent to prove that he had owned the disputed domain name since its creation in 1998, as opposed to since 2017 when the WhoIs record was updated. The Complainant also added that, in any case, the establishment of its company in 1996 predated the initial registration of the disputed domain name in 1998. Moreover, the Complainant argued that the Respondent should have known about the Complainant due to its international presence and number of international trademark registrations. Finally, the Complainant submitted that the non-use of the disputed domain name would not have prevented a finding of bad faith.

The Panel considered that Complainant's arguments were not sufficient to demonstrate the Respondent's bad faith. First of all, the Panel found that the registration date of the disputed domain name by the Respondent was not clear. However, even if the Respondent had acquired the domain name in 2017, as asserted by the Complainant, this would still predate the Complainant’s earliest registered trademark rights. Furthermore, in the Panel's view, the Complainant had not offered any evidence that the Respondent would necessarily have been aware of the Complainant’s business, whether in 1996 or 2017. In addition, the Panel found that the complaint was entirely devoid of evidence supporting the Complainant’s assertion regarding use of the disputed domain name in bad faith. The Panel noted that passive holding was considered to be in bad faith only in certain limited circumstances and these were absent in the present proceedings. Finally, the Panel observed that the most obvious and credible explanation for the Respondent’s registration of the disputed domain name was for his own business purposes in connection with his professional occupation. Accordingly, the Panel found that the Respondent had not registered and used the disputed domain name in bad faith and so the Complainant had not satisfied the third requirement under the UDRP. Therefore, the Panel denied the transfer of the domain name to the Complainant.

This decision highlights once again how having a trademark does not necessarily mean that a rights holder will succeed in obtaining transfer of a domain name, even if it is identical to such trademark and even if the respondent does not reply to the complaint. In cases where a respondent also has a legitimate interest, the rule of “first come first served” generally applies. Such legitimate interest may be constituted by the proximity between the respondent’s name and the disputed domain name (see paragraph 4(c)(ii) of the Policy). It is therefore recommended that potential complainants conduct at least basic due diligence before deciding to file a complaint under the Policy, if the name of the registrant may be ascertained (in many cases the underlying details are now redacted in the WhoIs as a result of data protection regulations).

The decision is available here.

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Requirement to prove absence of rights or legitimate interests not met in .IO case

In a recent decision under the .IO Domain Name Dispute Resolution Policy (.IO Policy) before the World Intellectual Property Organization (WIPO), a Panel refused to transfer the disputed domain name mindmaster.io, finding that the Complainant had failed to prove that the Respondent had no rights or legitimate interests in the Domain Name.

The Complainant was MeisterLabs GmbH, a German company developing internet applications intended to help teams of all sizes and industries to implement and realise their projects. The Complainant marketed “Mindmeister”, a mind-mapping solution first launched in 2007 and said to be used by more than 15 million people globally at the time of the decision. The Complainant owned various trademarks for the word MINDMEISTER, the earliest of which appeared to have been registered in 2007. The Mindmeister software was available via a website linked to the domain name mindmeister.com.

The Respondent was Shenzhen Edraw Software Co., Ltd, China. The Respondent registered the Domain Name mindmaster.io in 2019. At the time of the complaint, the Domain Name was linked by redirection to a website at the domain name edrawsoft.com which offered mind-mapping software for download under a heading which read “EdrawMind (Formerly MindMaster) for Mind Mapping”.

The Complainant initiated proceedings under the .IO Policy for a transfer of ownership of the Domain Name.

To be successful under the .IO Policy, a Complainant must satisfy the requirements of paragraph 4(a) of the .IO Policy, namely:

(i) that the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;

(ii) that the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) that the disputed domain name was registered or is being used in bad faith.

Under the first element of paragraph 4(a) of the .IO Policy, the Complainant considered that the Domain Name was confusingly similar to its MINDMEISTER trademark.

The Complainant argued that, in relation to the visual impression, the Domain Name and the trademark only differed in the letter “a” instead of “ei” in the second part of the trademark. The first five letters were identical as well as the last four letters of both words and this was in line with the similar aural impression, as both signs consisted of three syllables.

The Complainant also considered that the term “Meister” was commonly known among the English-speaking public, and the Domain Name was simply an English variation of the Complainant’s trademark.

The Respondent denied that the Domain Name and the trademark were confusingly similar by arguing that (i) they were in different languages and (ii) product reviews showed there was no confusion. The Respondent produced, as evidence, links to a number of Spanish, German and Italian website articles and some reviews in English, all of which were not taken into account by the Panel because the language of the proceedings was English and, even with regard to the reviews in English, their independence was not established.

The Panel found that the Domain Name was confusingly similar to the trademark in that it was aurally and visually similar. The Panel was of the view that a significant number of persons would recognise “meister” as the German equivalent of “master” and that the two terms differed only by the change from an “a” to an “ei” within the body of the word. The Panel added that it was well established that the top-level domain, in that case “.io”, did not affect the Domain Name for the purpose of determining whether it was identical or confusingly similar.

With regard to the second element of paragraph 4(a) of the .IO Policy, the Complainant contended that the Respondent had no rights or legitimate interests in the term “Mindmeister” because (i) the Complainant had not granted any licence or authorisation for the Respondent to use the MINDMEISTER trademark or any confusingly similar sign, (ii) the Respondent was not affiliated with the Complainant in any way and (iii) the Respondent did not use the Domain Name for a bona fide purpose or legitimate non-commercial purpose; rather the Domain Name resolved to a page in English with a “full-featured collaborative mind mapping and brainstorming tool” which tried to imitate the Complainant’s software and did not provide the Respondent with rights or legitimate interests.

The Respondent indicated that it was a legitimate company that had been in business since 2004 and that had invested significant time and resources in developing its own “Mindmaster” software and in marketing and protecting its intellectual property rights. The Respondent provided evidence showing it owned several registered trademarks for the word “Mindmaster” in China, the United States and the European Union, including for example a United States trademark registered in 2019 and claiming a first use in commerce in 2017.

The Respondent described its software as “a versatile, user-friendly, and professional mind mapping tool. Available on multiple platforms (Windows, macOS, Linux, Google Chrome, iOS, Android), including PC, tablet, mobile, and web, it allows the users to create mind maps and access them from each platform. With this excellent collaborative mind-mapping tool, working with teammates has never been easier.” The Respondent stated that its offering of that software established a legitimate interest and denied acting in bad faith.

To assess whether the Respondent had rights or legitimate interests in the term “Mindmeister”, the Panel made reference to the list of circumstances that may demonstrate that a respondent has rights or legitimate interests in a domain name, as provided by paragraph 4(c) of the .IO Policy, namely:

(i) before any notice to the respondent of the dispute, the use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or

(ii) the respondent has been commonly known by the domain name, even if the respondent has acquired no trademark or service mark rights; or

(iii) the respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

The Panel held that paragraph 4(c)(i) of the .IO Policy was potentially applicable because the Respondent had clearly been offering its mind-mapping software under the name “Mindmaster” prior to the complaint being lodged by the Complainant. The Panel considered that although the precise date of the commencement of the offering was not clear, it accepted that first use commenced in 2017 as claimed in the United States trademark registration, and absent any evidence to the contrary.

With regard to the bona fide requirement, the Panel considered that it had to encompass the Respondent’s knowledge and motives in choosing its name, in other words whether it was done deliberately to trade off, or take advantage of the Complainant’s name or reputation. To attempt to resolve the issue, the Panel looked at the term “Mindmaster” and did not find it to be so unusual as a name for mind-mapping software as to rule out the possibility of independent derivation. However, the Panel pointed out that the Respondent had not explained how it had come to decide upon the name “Mindmaster” for its software, or whether it had performed any searches on the name and if so with what result and specifically whether it had identified or was aware of the Complainant or its software.

The Panel also noted that neither party had explained what (if any) other users there were of the term “mindmaster”. For example, the Panel had no knowledge of how (if at all) the domain name mindmaster.com was being used and by whom, and even had the Respondent identified the Complainant or its software when it decided to use the name “mindmaster” it may have formed the view that the Complainant’s name indicated a Germanic product and that its adoption of an English version of the name was legitimate.

Regarding the Complainant’s contention that the Respondent was selling software which tried to imitate the Complainant’s software, the Panel was not clear exactly what the Complainant meant. It appeared to the Panel that both software products were directed at the same type of functionality, namely a product which enabled the visual representation of thought processes and ideas. The Panel indicated that there was no evidence that the Respondent’s product was anything more than a competing product aimed at a similar market and there was nothing wrong with that.

The Panel also noted that (i) the Complainant had not produced any evidence that the Respondent’s software targeted any other rights of the Complainant, (ii) as matter of visual observation, the Respondent’s website was significantly different to the Complainant’s website and (iii) in any event the website indicated that the Respondent’s software had been rebranded although curiously the Respondent had not explained the reasons for and time of the rebranding and the reference to “EdrawMind (formerly MindMaster)” or when it introduced such change.

The Panel explained that proceedings under the .IO Policy were of a limited and restricted nature, they did not involve oral hearings, discovery or cross examination, and hence were only applicable to clear-cut cases, and it was not usually appropriate for the Panel to decide disputed questions of fact or matters of truth or falsehood. The Panel added that such restrictions did not however mean that it could not reach a conclusion as to the veracity of a case that was being advanced, where the only evidence provided was in the form of conclusory statements that were inherently not credible, and which were not supported by relevant corroborative or third party evidence.

The Panel found the Respondent’s evidence seemingly incomplete and would have expected a much fuller explanation of how and why the Respondent had adopted the name “Mindmaster” for its software. However, the Panel also pointed out that (i) the Respondent had been offering its Mindmaster software for several years and claimed to have millions of users of that software, whereas (ii) the Complainant had not, to the Panel’s knowledge, sought to claim any rights in the term “mindmaster” as opposed to “mindmeister”, which left open a question as to whether the Respondent had transgressed upon the Complainant’s rights in adopting the name Mindmaster.

The Panel held that it was not convinced that the Complainant had discharged its burden in showing that the Respondent lacked a legitimate interest, and considered that the question of whether the Respondent’s action, in adopting the name, targeted any other applicable rights the Complainant may have had, was an issue to be resolved in a court of law, where procedures such as disclosure, oral testimony and cross-examination were likely to be available.

In addition, the Panel considered that the Respondent’s registration of trademarks for the term MINDMASTER could contribute to establishing a right or legitimate interest and that a finding to the contrary would, in effect, deprive the Respondent of the benefit of its trademarks.

As a conclusion, the Panel declared that it would not be safe to consider this case to be so clear-cut that the Respondent’s claim to a legitimate interest could be rejected, and therefore held that the Complainant had not discharged its burden of establishing that the Respondent lacked rights or legitimate interests in the Domain Name.

With regard to the third element of paragraph 4(a) of the .IO Policy, the Panel declined to consider it given its decision on the second element of the same paragraph.

This decision shows the importance of credibly demonstrating a respondent’s absence of rights or legitimate interests, and underlines the difficulty of doing so when the respondent is an active competitor with a live website offering similar products or services to a similar market.

The decision is available here.

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DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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