Anchovy News, March 2022

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This is the March edition of Anchovy News. Here you will find articles concerning ICANN, the domain name industry and the recuperation of domain names across the globe. In this issue we cover:

DOMAIN NAME INDUSTRY NEWS

  • Tanzania: launch of .TZ domain name registrations
  • Greek and Greek but not Latin and Greek
  • Spanish domain name Registry highlights “reliability” and “evolution” of the .ES extension

DOMAIN NAME RECUPERATION NEWS

  • Complaint for chagall.com fails as Respondent's explanation “just about plausible”
  • Complainant fails to score
  • Silence doesn't mean bad faith

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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

Tanzania: launch of .TZ domain name registrations

TCRA, the Registry running the .TZ country code Top Level Domain (ccTLD) for Tanzania, located in East Africa, has decided to allow the registration of domain names directly under .TZ.

Like the Australian Registry did on 24 March 2022 (as reported in our January edition of Anchovy News), the Tanzanian Registry is opening up domain name registrations directly under its top level. Up until now, registrations were only possible under second level extensions such as .CO.TZ, .OR.TZ, .ME.TZ, etc.

.TZ applications can be submitted according to specific Priority Categories, and a two-phased Grandfathering period is taking place in order to enable existing registrants of Tanzanian domain names to apply for the corresponding domain names under .TZ.

The launch schedule is as follows:

  • Priority Category 1 – Grandfathering phase 1: From 1 March to 31 May 2022
    During this phase, registrants of Tanzanian third level domain names that were registered before 1 March 2022 as well as trade mark holders can apply for the corresponding domain names under .TZ.
  • Priority Category 2 – Grandfathering phase 2: From 1 June to 30 June 2022
    During this phase, registrants of Tanzanian third level domain names that were registered between 1 March and 31 May 2022 can apply for the corresponding domain names under .TZ.
  • Priority Category 3 – General Availability: 1 July 2022
    From 1 July 2002 onwards, anybody can apply for a .TZ domain name on a first come, first served basis, with no restrictions.

Should there be several applicants for one .TZ domain name within the same Priority Category, then priority will be given to the applicant who registered his/her third level domain name first.

There are currently over 23,100 Tanzanian domain names registered, the vast majority being under the extension .CO.TZ. As with all launches directly at the top level, the opening of .TZ registrations should raise interest and boost the number of domain name registrations in the TLD.

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Greek and Greek but not Latin and Greek

The European Registry for Internet Domains (EURid), the non-profit organisation responsible for operating the country code Top Level Domain (ccTLD) .EU (European Union), recently issued a reminder that, on 13 November 2022, any Greek domain names under the Latin extension .EU, will be deleted.

Following the launch of the .ею extension (.EU in Cyrillic) on 1 June 2016, to avoid any confusion, EURid introduced the rule that the second-level script (that is to say, the part before the extension) must match the top-level script (that is to say the extension).

Additionally, at the time of the launch of .ευ (.EU in Greek) on 14 November 2019, EURid clarified the applicable rules and how they would be implemented to ensure consistency across all three extensions (.EU, .ευ and .ею) as follows:

  • The introduction of a ‘script adjustment’ phase whereby registrars and registrants had to move previously registered domain name(s) in Greek to the .ευ extension, so that the top-level domain script matched the second level domain script.
  • Domain names registered under .EU in Greek were cloned and also registered under .ευ.
  • Registrars and registrants of domain names in Greek that have been cloned are informed on a yearly basis that these domains will co-exist under .EU and .ευ until 13 November 2022. Registrars of these domain names are required to pay fees for the domain name under .EU only. On 14 November 2022, the domain names in Greek under .EU will be phased out and their equivalent under .ευ will remain registered in the EURid database.

The phase-out of Greek domain names with the Latin .EU extension is being carried out in line with the ‘no script mixing’ best practice for Internationalised Domain Names. The objective of this practice is to avoid confusion between domain names that look similar.

In summary, on 14 November 2022, the three year ‘script adjustment’ phase will come to an end and only Greek domain names with the Greek .ευ extension will remain registered. It is therefore important for domain name owners who are still using a Greek domain name under the latin extension .EU for their online presence to transition to using their domain name under the Greek extension .ευ.

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Spanish domain name Registry highlights “reliability” and “evolution” of the .ES extension

The Spanish domain name Registry, Dominios.es, which is part of the Corporate Public Entity Red.ES, has recently published a report highlighting the “reliability” and “evolution” of the .ES domain name extension.

Based on the 2021 .ES domain name statistics, there were some 1,979,796 domain names registered under .ES as of 31 December 2021, which is a 0.6% increase on 2020’s total of 1,966,673. Unsurprisingly, Dominios.es is looking forward to reaching the two million milestone, which will help .ES maintain its position as one of the top twenty countries in terms of the total number of domain names registered.

The 1,979,796 registered domain names are spread across the various extensions, with .ES having 1,966,673 registrations, followed by .COM.ES (71,064 domains), .NOM.ES (7,504 domains), .ORG.ES (3,231 domains ), .GOB.ES (1,107 domains) and .EDU.ES (485 domains). The relatively low number of domains registered under .GOB.ES and .EDU.ES is due to the fact that these extensions are used exclusively by government entities and educational institutions, respectively.

In terms of the geographical spread of .ES domain name registrants, Germany has the highest number of registered .ES domain names outside of Spain with a total of 46,668 and is followed by the United States with 42,939 domain names. The United Kingdom and France account for 28,518 and 24,164 of .ES registrations respectively, and 155,877 domain names are registered throughout the rest of the world.

According to Dominios.es, the number of accredited registrars has also increased. At the end of 2021 there were a total of 107 accredited registrars compared with just 10 in 2003.

Domonios.es is also a member of CENTR (Council of European National Top-Level Domain Registries) which has as its mission to “promote and participate in the development of a high standard of Internet Country Code Top-Level Domain Registries (ccTLDs) for the benefit of its members and the Internet”, and as its name suggests, has a European focus. In addition, Dominios.es notes that the .ES namespace offers both companies and users an additional level of legal security as it is subject to and covered by Spanish legislation and the jurisdiction of the national courts, which it believes acts as a deterrent to abusive, fraudulent or speculative domain name registrations.

To visit Dominios.es, please click here.

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Domain name recuperation news

Complaint for chagall.com fails as Respondent's explanation “just about plausible”

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 chagall.com, partly on the basis that it reflected a Hebrew term with a sexual innuendo, and the Complainant failed to prove that the Respondent had acted in bad faith.

The Complainant was Association pour la défense et la promotion de L’œuvre de Marc Chagall, also known as the Marc Chagall Committee, a French association incorporated by the estate of the well-known painter Marc Chagall (1887-1985). The painter’s paintings have been sold for millions of dollars and are exhibited in famous museums worldwide. The Complainant owned various trade marks for CHAGALL including International trade mark No. 505527 registered in 1986 and European Union trade mark No. 000177709 registered in 1998. The Complainant had used the trade marks CHAGALL and MARC CHAGALL in connection with merchandise derived from works by the painter.

The Respondent was Miri & Isaac Shepher, two individuals based in the United States and the joint registrants of the Domain name. Because the Response was written on the basis that Isaac Shepher was the controller and decision-maker in respect of the Domain Name, the Panel proceeded as if Isaac Shepher were the sole Respondent.

The Domain Name was chagall.com, registered on 6 March 2000. As of 10 February 2005, it was used to point to a website offering it for sale, along with various other domain names, and indicating a price range from USD 5,000 to USD 5 million. As of 9 December 2021, the Domain Name resolved to a website headed “LifeAlert”, described as a medical alert system for elderly people.

In August 2021, the Complainant approached the Respondent to ask about acquiring the Domain Name, and the Respondent invited the Complainant to come up with an offer. In November 2021, the Complainant sent a cease and desist letter to the Respondent, to which the Respondent did not respond. In December 2021, the Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name.

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 Complainant contended that the Domain Name was identical to its registered CHAGALL trade mark. The Respondent did not dispute the similarity between the Domain Name and the Complainant’s trade mark. However, by invoking section 1.7 of the WIPO Overview 3.0, the Respondent argued that his use of the Domain Name for a website unrelated to the Complainant’s trade mark was evidence of a lack of confusing similarity.

The Panel accepted the Complainant’s submissions and found that, disregarding the TLD suffix, the Domain Name was identical to the Complainant’s trade mark and that the question of confusing similarity did not arise. In respect of the Respondent’s arguments, the Panel noted that section 1.7 could allow panels to take a respondent’s website into account only in “specific limited instances” where a panel would benefit from affirmation of confusing similarity and that such an assessment was not a replacement for the typical side-by-side comparison. Therefore, the Panel found that the Complainant had established the first element of paragraph 4(a) of the UDRP.

With regard to the second limb, the Complainant asserted that the Respondent had no permission to use its trade mark and had no rights or legitimate interests in the Domain Name. The Complainant added that the Respondent was not commonly known by the Domain Name. According to the Complainant, the lack of legitimate interests on the part of the Respondent was supported by the fact that the Domain Name had been offered for sale since at least 2005, and that the Domain Name, referring exclusively to the name of the famous painter, had only been used since to redirect to the Respondent’s website at www.lifealert.com. In addition, the Respondent’s ready agreement to offer to sell the Domain Name at the first request also reinforced his lack of legitimate interests. As such, the Complainant claimed that the Domain Name was not really of interest to the Respondent.

The Respondent refuted these arguments by stating that he registered the Domain Name purely because it comprised an English transliteration of a generic Hebrew term with a sexual innuendo, namely the Hebrew word for “concubine”. Moreover, the Respondent underlined that he had been registering domain names for their long-term potential value and did not register the Domain Name because it happened to be a surname, or the surname of Marc Chagall, or because it was a name or mark associated with the Complainant. The Respondent claimed that he possessed rights and/or legitimate interests in the Domain Name as a long-time investor in, and reseller of, domain names.

The Panel did not decide under the second element, considering that it was unnecessary given its findings under the third element.

Regarding the third limb, the Complainant asserted that the Respondent registered the Domain Name for the sole purpose of selling it at a clearly excessive price, namely between USD 5,000 and USD 5 million. Considering Marc Chagall’s exceptional international reputation, the Respondent knew or should have known about the existence and use of the Complainant’s well-known trade marks at the date of registration of the Domain Name. Further, the Complainant placed weight on the fact that the Respondent had redirected the Domain Name to a business which was unconnected with the painter and which supposedly had a poor reputation. Moreover, the Complainant underlined other potential indicators of bad faith on the part of the Respondent, such as the Respondent’s use of a privacy service, the fact that the Respondent chose to register the Domain Name in the “.com” TLD, which was likely to be of major importance to the Complainant, and the fact that the Respondent did not respond to the Complainant’s cease and desist letter.

In response, the Respondent stated that he had no knowledge of the Complainant’s registered trade marks. He argued that he was born in Israel and was a Hebrew speaker, and stated that he selected the Domain Name not by reference to the name of the painter or the Complainant’s trade marks, but purely because it comprised an English transliteration of a generic Hebrew word with a sexual innuendo, namely the Hebrew word for “concubine”. He further observed that sex-related domain names could carry a high value. As a result, he countered that he did not register or use the Domain Name in bad faith, but rather for its potential resale value.

Having carefully considered the various factors raised by the parties, the Panel found this to be a finely balanced case, and that some factors favoured the Complainant while others favoured the Respondent. The Panel noted that the Respondent also owned the domain name anak.com, which was a transliteration of the Hebrew word for “giant”. Given that the Domain Name formed part of a pattern of Hebrew-transliteration domain names, albeit small, it seemed at least conceivable that the Respondent did indeed select the Domain Name based on its phonetic identity with a Hebrew word. The Panel pointed out that it was not in a position to value the Domain Name, but was aware that the values of domain names could be enhanced if they consisted of short single words and also, as asserted by the Respondent, if they were sex-related. The Panel further observed that there was no unsolicited offer by the Respondent as it was the Complainant who made the initial approach. Ultimately, the Panel found that the Respondent’s explanation, if not fully compelling, fell into the category of “just about plausible”. Bearing in mind that the Complainant was required to prove its case on the “balance of probabilities”, the Panel did not feel that there was enough supporting evidence before it that would justify the Panel in dismissing the Respondent’s explanation and depriving him of a domain name that he had owned for some 20 years. The Panel therefore found that the Respondent’s registration and use was not in bad faith and denied the Complaint.

Comment

This decision underlines that in UDRP proceedings a Panel must make its best assessment of a respondent's motive based on the evidence placed before it, and this differs from proceedings in conventional national courts where disclosure of documents and examination of witnesses is possible. Under the UDRP it is essential to prove that a disputed domain name was registered and is being used to target a particular trade mark owner. Attempting to buy a domain name and then filing a UDRP complaint is always a risky strategy when the evidence of targeting is thin, although the decision in question could certainly have been different had the Respondent never responded.

The decision is available here.

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Complainant fails to score

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 as the Respondent registered it before the Complainant proved that it had developed any rights.

The Complainant was Cannawayz Inc., a company operating a medical and recreational cannabis directory of cannabis users and businesses, based in the United States. It held a domain name cannawayz.com, which pointed to its official website, and owned two United States trade marks for CANNAWAYZ, both registered in 2020 with a claimed first use in 2019. The Respondent was an individual based in the United States.

The Domain Name was cannaways.com, registered by the Respondent on 10 November 2014. In addition to the Respondent’s name, the WhoIs also listed an entity called “Oregon Fair Trade Cannabis” as the registrant Organisation. The Domain Name resolved to a GoDaddy parked page with pay-per-click links. In or about 2020, the Complainant approached the Respondent in an attempt to purchase the Domain Name. No agreement was reached between the Parties.

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.

With respect to the first limb, the Complainant contended that the Domain Name was confusingly similar to its CANNAWAYZ trade mark given that the use of the letter “s” at the end of the Domain Name, as opposed to the letter “z” in the Complainant’s trade mark, could not prevent a finding of confusing similarity. This assertion was not contested by the Respondent.

The Panel accepted the Complainant’s argument and further noted that the terms CANNAWAYZ and CANNAWAYS were aurally virtually identical. The first limb was therefore satisfied.

Regarding the second limb, the Complainant argued that the Respondent was never authorised to use its CANNAWAYZ trade marks, nor was it affiliated with or somehow related to the Complainant. The Complainant further contended that the Respondent had never applied to register “Cannaways” as a trade mark or used this term in commerce. The Respondent contended that he had registered over 500 domain names related to cannabis or hemp since 1998 and had been involved in the business of buying and selling these domain names for a number of years. He therefore claimed to have legitimate interests in the Domain Name.

The Panel didn’t address the second limb given its findings in favour of the Respondent under the third limb, as further detailed below.

As far as the third limb was concerned, since the Domain Name was registered prior to the registration of the Complainant’s two trade marks for CANNAWAYZ, the Complainant, on the one hand, tried to rely on its common law trade mark rights in this term dating back to at least 2015 and, on the other hand, asserted that the Domain Name was transferred to Oregon Fair Trade Cannabis at some point in 2019, on a date long after the Complainant had been using its CANNAWAYZ name “extensively and continuously”. Based on these assertions, the Complainant claimed that the Respondent had registered the Domain Name with its trade mark in mind and used it to make commercial gain by pointing to a parked page with PPC links, which was clearly in bad faith.

The Respondent argued that he registered the Domain Name in 2014 and there was no evidence that the Complainant had made any use of the CANNAWAYZ mark prior to 2019. Therefore, the Respondent maintained that this dispute was groundless and the Complaint should be denied.

The Panel first addressed the issue regarding the Complainant’s purported common law trade mark rights for CANNAWAYZ. As noted in WIPO Panel Views on Selected UDRP Questions, Third Edition (WIPO Overview 3.0), section 1.3, the existence of such unregistered rights cannot be based on conclusory allegations but should be supported by relevant evidence through a range factors, such as (i) the duration, extent and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public recognition and (v) consumer surveys. In this case, the Complainant did not provide any specific evidence to substantiate the use of the CANNAWAYZ mark prior to the claimed date of first use in commerce (2019) in its trade mark application.

In spite of the above, the registration of the Domain Name could still have been made in bad faith if it had been transferred to Oregon Fair Trade Cannabis in 2019, as asserted by the Complainant (under the UDRP, a transfer to an unconnected third party may constitute a new “registration” and thus a new starting point at which bad faith may be determined).

In order to seek more clarification on this key issue, the Panel issued a Procedural Order requesting the Respondent to provide additional information. The Respondent submitted evidence of his initial registration of the Domain Name and the subsequent renewals to prove that he had held the Domain Name continuously since 2014. Regarding his relationship with Oregon Fair Trade Cannabis, the Respondent explained that he was a friend of the founder and had registered the domain name fairtradecannabis.net on his behalf, using Oregon Fair Trade Cannabis as the registrant organisation in the WhoIs contact information. According to the Respondent, he may have inadvertently used the contact information template from that domain name for the Domain Name as an update. In any event, the Respondent maintained that he remained the owner of the Domain Name, which was never transferred to Oregon Fair Trade Cannabis. As evidence, the Respondent submitted an email from an individual affiliated with Oregon Fair Trade Cannabis, in which that person denied any ownership. The Complainant did not submit a reply to the Respondent’s supplemental filing, although it was given a chance to do so.

The Panel further pointed out that, even if Oregon Fair Trade Cannabis had become the new owner of the Domain Name in 2019, the Complainant had failed to show that this entity would have acquired the Domain Name with prior knowledge of the Complainant. The Domain Name was therefore not registered in bad faith.

In view of the above, the third limb was not satisfied and the Complaint was denied.

Comment

Brand owners who intend to recuperate a domain name through a UDRP proceeding should always bear in mind that the overall burden of proof rests with them and they should provide evidence to support each of their assertions. This is particularly the case when brand owners wish to rely on their common law trade mark rights.

The decision is available here.

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Silence doesn't mean bad faith

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 McCoy & Partners B.V., a Dutch company providing information technology consultancy services.

The Respondent was Domain Vault LLC, an American company presumably in the domain name industry. The Respondent did not submit a response.

The Domain Name, mccoy.com, was registered in 2001 and pointed to a website containing pay-per-click (“PPC”) links.

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

(i) the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

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

(iii) the domain name has been registered and is being used in bad faith.

With regard to the first limb, the Complainant contended that it had Benelux trade mark rights in the name MCCOY since 2019. In addition, the Complainant argued that it had unregistered trade mark rights in the term MCCOY due to its international activities using that name. The Complainant also submitted that it operated its main website at www.mccoy-partners.com.

The Panel agreed with the Complainant and found that the Domain Name was identical to the Complainant’s MCCOY trade mark and thus 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 asserted that the Respondent had ignored all of its contact attempts. Such failure to respond was, according to the Complainant, equivalent to the failure to respond to a UDRP Complaint and therefore strongly suggested the Respondent's lack of legitimate interests. The Complainant also highlighted that under the registration agreement, a domain owner was liable to lose its domain name if it did not respond to emails relating thereto. Moreover, the Complainant added that given the pointing of the Domain Name to a website containing PPC links, the Respondent could not claim bona fide pre-Complaint preparations to use the Domain Name. In addition, the Complainant argued that there was no indication that the Respondent was commonly known by the Domain Name or of any legitimate noncommercial or fair use thereof.

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.

Turning to the third limb of the Policy, the Complainant submitted that the Domain Name was passively held by the Respondent for the following reasons: (i) the distinctiveness of the Complainant's trade mark, (ii) the fact that the Respondent had failed to acknowledge or reply to any communications from the Complainant or its broker, (iii) the concealment of the Respondent's identity and (iv) the implausibility of any good faith use to which the Domain Name may be put. The Complainant also suggested that the Respondent had not owned the Domain Name since its creation in 2001, but became the registrant at a later date. Finally, the Complainant underlined that the Respondent had been the subject of at least 15 adverse UDRP cases, which constituted evidence of a pattern of bad faith registration and use.

The Panel first noted that the registration date of the Domain Name predated the Complainant's trade mark rights significantly. The Panel then underlined that the Complainant had provided no evidence of a later acquisition date by the Respondent, and therefore the Panel had to proceed on the basis that the Respondent acquired the Domain Name in 2001. As such, the Panel found that the Domain Name could not have been registered in bad faith. In view of such finding, the Panel noted that it did not assist the Complainant that the Respondent had failed to reply to the Complainant's communications or to submit evidence of preparations to use the Domain Name for an active website. Under such circumstances, the Panel also decided that the fact that there were at least 15 negative UDRP decisions against the Respondent was of not assistance. The Panel also noted that given that "McCoy" was a common surname, it would have been challenging for the Complainant to succeed, even if its trade mark rights predated the registration date of the Domain Name.

Furthermore, the Panel highlighted that the principle of passive holding did not apply in the present proceedings, given that the Domain Name would need to have been registered in order to target the Complainant, which was not the case here.

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.

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 trade mark rights. In such circumstances panels will generally only find bad faith in certain very limited circumstances indicating that the respondent’s intent was to unfairly capitalise on the complainant’s nascent (typically as yet unregistered) trade mark rights, which was not the case here. In addition, this decision serves as a reminder that while a panel may draw appropriate inferences from a respondent’s default, such default is not necessarily an admission that the complainant’s claims are true.

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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