Anchovy News, September 2021

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This is the September 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

  • .AU direct registrations to launch in March 2022
  • Abu Dhabi launches .ABUDHABI
  • .DE exceeds expectations

DOMAIN NAME RECUPERATION NEWS

  • What's the Parramatta matter?
  • Transferring a parody domain name? Never Ever!
  • Unearthed truth: lack of evidence from complainant means success for respondent

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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

.AU direct registrations to launch in March 2022

auDA has recently announced that Australians (as well as those with a verified connection to Australia) will be able to register domain names directly in the .AU namespace as of 24 March 2022.  Up to now, only third-level domain names, such as .COM.AU, .NET.AU and .ORG.AU, could be registered in the Australian namespace. 

The long anticipated announcement of the release of .AU direct registrations from auDA came on 19 August 2021.  In common with the third-level extensions, .AU domain names will only be available to those with a “verified Australian presence”, such as Australian businesses, associations, government entities, individuals or the holders of exact match Australian trademarks.  auDA has recently tightened up the licensing rules with regard to eligibility (see our article on this topic in the September 2020 issue of Anchovy News) and intensified compliance checks, so registrants would do well to ensure that they meet the requirements before applying.  

auDA CEO, Rosemary Sinclair said of the .AU launch, “I am delighted to announce .au direct will be available from March 2022, providing consumers the opportunity to licence shorter, eye-catching names and bringing Australia in line with most other country code Top Level Domains including the United Kingdom (.uk), Canada (.ca), the USA (.us) and New Zealand (.nz).”

There will be a Priority Allocation period for .AU running between 24 March and 24 September 2022 during which time the holders of existing third-level domain names will be able to apply for Priority Status for their domain names. 

The Priority Allocation process will also set the rules for cases where more than one applicant seeks to register the same domain name.  The licence for such domain names will be allocated according to “priority categories”, which are determined by:

  • the existing domain name creation date; and
  • the Priority cut-off date of 4 February 2018, as outlined in auDA’s Priority Allocation Process. 

Conflicts related to Priority Allocation will be resolved by direct negotiation between the relevant applicants.  auDA’s complaints process under the .au Licensing Rules and the .au Dispute Resolution Process (auDRP) will also be available to parties.

The registrants of existing third-level domain names will have six months from the launch to apply for Priority Status with an accredited registrar.  In the event that the registrants do not apply within that period, the corresponding domain names will be made available for registration by the public.

In a Media Release on the launch, auDA stated: “The trusted, reliable and uniquely Australian .au domain has been supporting Australians online for more than 35 years and the launch of .au direct is an exciting innovation, delivering enhanced opportunities for Australian Internet users.”

With the launch date set and the rules for the Priority Allocation period defined, domain name holders should review their portfolios with a view to identifying which of their existing Australian domain names they would like to secure in .AU. 

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Abu Dhabi launches .ABUDHABI

The Abu Dhabi Government has recently launched .ABUDHABI as the official domain name extension for the emirate of Abu Dhabi.

Abu Dhabi is the capital and the second-most populated city of the United Arab Emirates, after Dubai.  The Abu Dhabi government sees .ABUDHABI as representing the “digital identity" of Abu Dhabi in the virtual world.  It also envisages .ABUDHABI as helping to promote the emirate, from the local level through to the international level, as well as across the tourism, cultural and economic sectors.

According to the Abu Dhabi Government Media Office, the Abu Dhabi government is working on implementing a “consistent governance framework' throughout the government, as well as changing the concept of government services in line with the government moving towards a “digital future”.  The government also believes that .ABUDHABI will complement its efforts to accelerate the digital transformation of the emirate, as well as help the lives of both individuals and businesses in Abu Dhabi. 

In order to register a .ABUDHABI domain name, an applicant will need to meet one of the following three criteria;

Criteria A: Entities in Abu Dhabi

The Applicant must be an entity registered with the Chamber of Commerce that has a valid address in Abu Dhabi associated with that registration and which conforms to the laws and policies of the United Arab Emirates.

Criteria B: Residents of Abu Dhabi

The Applicant must be a citizen and/or permanent resident of the United Arab Emirates with a valid address in Abu Dhabi.

Criteria C: Associated Entities

The Applicant must:

▪ manufacture or sell a product to residents of Abu Dhabi;

▪ provide a service to entities or individuals residing in Abu Dhabi;

▪ organise or sponsor events in Abu Dhabi;

▪ facilitate activities in Abu Dhabi; or

▪ teach or provide training to residents of Abu Dhabi

To visit the Abu Dhabi domain name Registry, please click here.

To visit the Abu Dhabi Government Media Office, please click here.

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.DE exceeds expectations

DENIC, the Registry responsible for the country code Top Level Domain (ccTLD) .DE (Germany) recently announced that the bar of 17 million registered domain names had been passed.

The 17 millionth .DE domain name, melba-stoffkreation.de, was registered on 13 July 2021, with the very first .DE domain name having been registered nearly 35 years ago back in November 1986.

The success of .DE domain names is clear when comparing it with the other ccTLDs and it is currently only surpassed by .TK (Tokelau) and .CN (China). At the end of the second quarter, the top ccTLDs in terms of total domain name registrations were as follows (Source: ZookNIC, Q2 2021):

  1. Tokelau (.TK)  24.7 million
  2. China (.CN)  20.7 million
  3. Germany (.DE) 17 million
  4. United Kingdom (.UK) 11 million
  5. Netherlands (.NL) 6.2 million
  6. Russian Federation (.RU) 5.7 million
  7. Brazil (.BR) 4.8 million
  8. France (.FR) 3.8 million
  9. European Union (.EU) 3.7 million
  10. Italy (.IT) 3.4 million

Although .DE is now one of the most successful of the ccTLDs, this was not necessarily the case from the outset.  For the first two years after its introduction, .DE was slow to gain momentum with no more than six domain name registration entries during this period which were entered manually. However, a decade or so later at the end of 1996, around 50,000 domain names had been registered and the DENIC cooperative had been founded by 37 German Internet service providers.  From this moment, .DE did not look back and there is now an average of more than 30,000 domain names being registered every month.

.DE is open to all, the only requirement being a local administrative contact, and it remains the preferred choice among the German population, even ahead of .COM.  In terms of figures, now nearly every fifth citizen of Germany has a .DE domain name and its popularity does not stop at the German border, with almost 1.5 million .DE domain names registered in the name of holders residing outside of Germany.

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Domain name recuperation news

What's the Parramatta matter?

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 parramatta.com, finding that the Complainant had failed to prove that the disputed domain name was identical or confusingly similar to a trademark or service mark in which the Complainant had rights.

The Complainant was the City of Parramatta Council, Parramatta being the second oldest city in Australia, having been founded in 1788, some months after Sydney.  The Complainant had registered a number of trademarks, including:

  • Australian Trademark No. 387468, THE COUNCIL OF THE CITY OF PARRAMATTA N.S.W. (and device), registered on 15 February 1983;
  • Australian Trademark No. 1936396, PARRAMATTA LANES (figurative mark), registered on 25 June 2018;  and
  • Australian Trademark No. 1936400, RIVERSIDE NATIONAL THEATRE OF PARRAMATTA (stylized), registered on 25 June 2018. 

The Complainant's Australian Trademark No. 387468 included a disclaimer, stating that "Registration of this trademark shall give no right to the exclusive use of the geographical name PARAMATTA NSW."

The Complainant also held pending trademark applications for "PARRAMATTA LANES", stylised versions of "PARRAMATTA", as well as a stylised version of "WHERE IT'S PARRAMATTA". 

The disputed domain name was first registered in 2004.  The Respondent purchased the disputed domain name in March 2012 with a view to developing a website promoting Parramatta.  Prior to submission of the Complaint to WIPO, the disputed domain name resolved to a parking page displaying pay-per-click links, including to such items as "Parramatta Eels", "Sales", "restaurant store", "used cars", "used car sales", and "Australian".

In order to prevail, a complainant must demonstrate, on the balance of probabilities, that it has satisfied 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.

The Panel noted that, insofar as the Complainant's Australian Trademark No. 387468, THE COUNCIL OF THE CITY OF PARRAMATTA N.S.W. (and device) was concerned, the Complainant was required to disclaim exclusive rights over the name "Paramatta", as it corresponded to the name of a place.  In light of this, the Complainant was unable to rely on that trademark in order to prove rights over "Paramatta" alone.  The Panel further observed that the Complainant's other registered trademarks included significant additional verbal elements, which distinguished them from the word "Parramatta" alone.  In addition, the Panel found that the Complainant's trademark applications on their own did not qualify as trademark rights under the UDRP. 

In relation to the Complainant's claim of unregistered trademark rights in PARRAMATTA, the Panel held that, for purposes of the UDRP, the legal authority of a geographical area does not, as a matter of principle, have an exclusive right over the name of that geographical area.  Such a governing body may have such rights if it succeeds in proving that the term has acquired secondary meaning distinguishing the entity as the trade source of goods or services.  However, in the present case, the Complainant had failed to demonstrate that "Parramatta" by itself had acquired secondary meaning designating the Complainant or its goods or services.  Noting that "Parramatta" corresponded to the name of a place, the verbal differences of the Complainant's remaining trademarks were of a nature that the Panel was unable to find that the disputed domain name was confusingly similar to them. 

The Complainant had therefore failed to establish the first element of the UDRP.

In light of the Complainant's failure to carry its burden under the first element of the UDRP, the Panel found it unnecessary to consider the remaining requirements. 

The present case is a clear example of the limited scope of the UDRP, as it applies to trademarks.  Whether protection under the UDRP could be extended to geographical indications was considered in the Final Report of the First WIPO Internet Domain Name Process, which stated that "registrations that violate trade names, geographical indications or personality rights would not be considered to fall within the definition of abusive registration for the purposes of the administrative procedure".  Part of the rationale for such a limitation appears to be keeping in line with the legislative intent to create a truly international dispute resolution system, as the report went on to state that "the law with respect to trade names, geographical indications and personality rights is less evenly harmonized throughout the world […]".  Prior UDRP panels have held that a fragment of a trademark may, in certain cases, be sufficient to establish confusing similarity for purposes of standing under the UDRP.  Reading between the lines, it is clear that broader policy considerations surrounding geographical indications underpin the final outcome of this case. 

The decision is available here.

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Transferring a parody domain name? Never Ever!

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 nevereverfx.com, finding that the Complainant had failed to prove that the Respondent had no rights or legitimate interests and that the Respondent had registered and used the Domain Name in bad faith.

The Complainant was ICC Intercertus Capital Ltd., an international online broker, which provided access to tradable instruments for both retail and institutional investors.  The Complainant had registered a trademarks for EVERFX, including European Union Trade Mark No. 017995046, registered on 16 March 2019, and was the owner of the domain name everfx.com at which it operated its commercial website, making use of the logo "X everfx | for every trade".

The Respondent registered the Domain Name on 24 March 2021.  At the time of the proceedings, the Domain Name resolved to a website warning consumers against using the Complainant's services and included a parodied copy of the Complainant's logo.

The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name and of another domain name, never-everfx.com, which was passively held by its registrant.  After the filing of the Complaint, the Complainant was alerted to the fact that the two domain names belonged to different owners.  The Complainant argued for consolidation of the Respondents based on the fact that the domain names were registered within eight days of one another, that they were essentially identical (but for the presence of a hyphen), and that both used the generic Top-Level-Domain (gTLD) “.com".  The Panel rejected these arguments underlining, among others, the lack of strong evidence of common control.  As a result, the Panel's findings on the merits addressed the Domain Name nevereverfx.com only.

To be successful under the UDRP, a Complainant must satisfy the requirements of paragraph 4(a) of the UDRP, namely that:

(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 the first element of paragraph 4(a) of the UDRP, the Panel found that the Complainant had established rights in the EVERFX trademark, and that the Domain Name incorporated the Complainant's registered mark in its entirety.  The addition of the term "never" as a prefix did not prevent a finding of confusing similarity between the Domain Name and the Complainant's trademark.

With regard to the second element of paragraph 4(a) of the UDRP, the Complainant claimed that the Respondent had no rights or legitimate interests in the Domain Name because the Domain Name was used to defame the Complainant, implying that it was conducting illegal activities and therefore engaging in extreme criticism, and that it created a risk of confusion for potential customers.  The Respondent countered that it was exercising its right to freedom of expression in order to warn the public against fraudulent activities and that there could be no risk of confusion for potential customers given that it was not in competition with the Complainant.

The Panel found that the Respondent had successfully passed the "impersonation test", which addressed the question of whether a domain name would be mistakenly perceived by the public as being authorized by or affiliated with the trademark holder.  The Panel found that the addition of the term "never" to the Complainant's trademark created a blended term which was likely to be considered derogatory such that potential customers were unlikely to perceive the Domain Name as being affiliated with or authorised by the Complainant, and served as a sufficient indication that the website at the Domain Name was critical of the Complainant.  Moreover, the Panel found that the criticism expressed by the Respondent seemed genuine and non-commercial and as such could not be interpreted as a pretext for cybersquatting or tarnishment of the Complainant's trademark.  The Panel therefore found that the Complainant had failed to carry its burden under the second element of paragraph 4(a) of the UDRP.

With regard to the third element of paragraph 4(a) of the UDRP, the Complainant claimed that the Respondent had registered and used the Domain Name in bad faith because its aim was to damage the Complainant's reputation and disrupt its business.  The Complainant also claimed that the Respondent's false accusations could be subject to criminal penalties under Liechtenstein law where the Respondent resides.

The Panel rejected these arguments and reiterated its finding under the "impersonation test", emphasising once again that the Respondent appeared to be engaged in genuine non-commercial criticism, and that there was no evidence of cybersquatting intent by the Respondent.  The Panel also underlined that the UDRP was not a substitute for a defamation action, or a criminal action for  false claims in its jurisdiction, and should the Complainant pursue such actions, it should do so in a court of competent jurisdiction.  The Panel ultimately found that the Complainant had not satisfied the third element of paragraph 4(a) of the UDRP.

This decision provides a good example of how the UDRP offers a safe harbour protecting freedom of expression.  For prospective Complainants to rely solely on notions of what amounts to defamation would be misguided, as UDRP panels typically lack the jurisdiction and tools necessary to make such a finding.  Merely showing that a domain name is used to heavily criticise a trademark holder often will not be sufficient.  More central to the inquiry as to whether the domain name at issue is being used for legitimate non-commercial or fair use will be proving that the relevant public will mistakenly perceive the domain name as being affiliated with or authorised by the trademark holder. 

This decision also serves as a reminder that clear evidence of common control is required in order to support an argument for consolidation of respondents.  The mere registration of domain names a few days apart and apparent similarity between them, even approaching identity, is not enough.  Further evidence of common control is often needed, and can include, inter alia, registration of the domain names with a common registrar, matching name server delegations or configurations, and/or common features within hosting arrangements or website content.

The decision is available here.

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Unearthed truth: lack of evidence from complainant means success for respondent  

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of the disputed domain name mytrueearth.com, finding that the Complainant failed to provide sufficient evidence to demonstrate that the Respondent lacked rights or legitimate interests in the disputed domain name and that the disputed domain name was registered and used in bad faith.

The Complainant was My Passion Media Inc., incorporated in British Columbia, Canada.  The Complainant offered laundry detergents and products under the TRU EARTH trademark and sold "Tru Earth" branded detergent internationally. The Complainant's other "Tru Earth" branded products included eco-strips laundry detergent, wool dryer balls, multi-surface cleaner, stainless steel straws, bamboo cutlery sets, beeswax food wraps, and reusable cotton mesh product bags.  For use in connection with its products, the Complainant had obtained trademark registrations for TRU EARTH, including United States Trademark Registration No. 6206861 for the word mark TRU EARTH, filed on 16 August 2019, and registered on 24 November 2020, showing a claimed date of first use in commerce of 3 April 2019.  In 2020, the Complainant enjoyed notoriety in the Canadian business media in light of its substantial business growth.  The Complainant also enjoyed a substantial following on social media. 

The Respondent was Constantina Anagnostopoulos, Mytrueearth of the United States of America.

The evidence on record indicated that between October 2018 and September 2019, the Respondent had been engaged in the development of a cleaning product.  In March 2018, the Respondent entered into discussions with a graphic designer for the Respondent's business, and in June 2019, the Respondent engaged in correspondence with an attorney regarding the use of the name "True Earth Company", including a search on the Illinois companies database for the same.  The disputed domain name, mytrueearth.com, was created on 10 July 2019.  Since 5 October 2019, the disputed domain name was used by the Respondent for a website entitled "TRUE EARTH" which initially offered "True Earth" branded multi-surface cleaner for sale and later added "True Earth" branded wool dryer balls.  On 30 November 2020, the Respondent received a trademark infringement notice.  On 4 December 2020, the Respondent removed the dryer balls from its online store.  

To be successful in its complaint, a complainant must satisfy the three elements set forth under paragraph 4(a) of the UDRP:

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.

Under the first element, the Panel found that the Complainant had UDRP-relevant registered rights in the trademark TRU EARTH.

In comparing the disputed domain name and the trademark, on a straightforward side-by-side basis, the Panel found that the disputed domain name was confusingly similar to the Complainant's trademark.  Here the disputed domain name added the letter "e" to make the dictionary word "true" and prefixed the work "my".  Such additional elements did not change, for the Panel, the fact that the Complainant's mark was sufficiently recognisable in the disputed domain name. 

The Panel further noted that both the disputed domain name and the Complainant's trademark were aurally identical and in these circumstances, the Complainant had satisfied the first element set out in paragraph 4(a) of the UDRP.

With regard to the second element, ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name are set forth in paragraph 4(c) of the UDRP. 

In this case, the Panel's findings on the issue of rights and legitimate interests focused upon the Respondent's conduct in its registration and use of the disputed domain name.

The Panel asked itself whether the evidence on record tended to indicate that the Respondent had registered the disputed domain name with knowledge of the rapid growth and success of the Complainant's business, operating under the then unregistered trademark TRU EARTH.

The Panel found that the Respondent had engaged in demonstrable preparations to use the disputed domain name, and that when the Respondent registered the disputed domain name, it could not have known of the Complainant's registered trademarks, which were filed one month after the date of registration of the disputed domain name.

In determining whether the Respondent might have otherwise known of the Complainant, the Panel noted that a "degree of suspicion" might have arisen regarding the unusual approach that the Respondent engaged in when registered the disputed domain name – restricted to consulting the Illinois state database.  Absent a more generalised search, such a restrictive inquiry could have suggested that the Respondent intended not to find the Complainant's existence by looking at source materials where the Respondent knew that the Complainant could not be found.  Nevertheless, the Panel emphasised that this was not enough for it to conclude, on balance, that the Respondent had any such intention.  The Panel noted in this regard that the Complainant's evidence failed to provide adequate detail as to its probable notoriety at the material time.  The Panel also took note of a list of some 17 URLs produced by the Respondent, indicating many brands using "tru", "true" or "earth" in domain names relating to environmentally conscious and sustainable businesses.

The Panel was satisfied that the Respondent had made demonstrable preparations to use the disputed domain name and corresponding brand name in connection with bona fide offering of goods and services before notice of the dispute.  The Panel found that the Complainant had failed to prove that the Respondent had no rights and legitimate interests in the disputed domain name and had therefore not satisfied the second element of the UDRP.

Concerning the third element, the Panel noted that many of the Panel's findings in relation to the circumstances in which the disputed domain name was registered, as noted under the preceding element, were also relevant to the third element.  The Panel stressed that while certain attempts have been made to imply the concept of retroactive bad faith, the current UDRP jurisprudence is clear in that that no such approach is permissible and that the respondent must been shown to have known of, and to have targeted, the complainant's trademark at the date of registration of the disputed domain name.  In the present case, the evidence before the Panel was insufficient to give rise to a finding of registration in bad faith, as the Complainant had not proved that the registration was made with the requisite knowledge or intent. 

In light of the Panel's findings in relation to the second element of the UDRP, and noting the Complainant's failure to demonstrate bad faith registration of the disputed domain name, the Complainant considered it unnecessary to reach a definitive finding on the question of whether the disputed domain name was used in bad faith. 

The Panel went on to note that the Parties may have a wider trademark dispute, going beyond the registration and use of the disputed domain name. 

The Complaint was therefore denied.

This decision illustrates the importance for complainants to convincingly establish the existence of their trademarks or their reputation at the time a disputed domain name was registered, in order to prove bad faith, rather than at the time that commercial use is being made of the disputed domain name.  It also underlines the relatively narrow scope of the UDRP, intended to resolve instances of abusive domain name registration and use, rather than broader trademark infringement disputes.

The full decision is available here.

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Anchovy® - Global Domain Name and Internet Governance

Hogan Lovells offers a unique, comprehensive and centralized Paris-based online brand protection service called Anchovy® for global domain name strategy, portfolio management and global enforcement.

We are accredited registrars with many country-specific Registries worldwide and the only law firm to be an accredited ICANN registrar.

We also specialise in all aspects of the ICANN new generic Top Level Domain (gTLD) process and we are an agent for the Trademark Clearinghouse. As the global Domain Name System undergoes an unprecedented expansion, brand owners must revise their online protection strategies and we are ideally placed to guide them. We are also frequently brought in to advise on cybersecurity issues arising across the globe.

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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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