Domain Name News, June 2022 - Anchovy News

Hogan Lovells

[co-author: Laëtitia Arrault, Sean Kelly, Cindy Mikul, Maria Rozylo, and Tony Vitali]

This is the June 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, including: Israel launches new IDN .ישראל, ICANN seeks public comment on Transfer Policy Review, EURid and ICANN - promoting multilingualism and inclusion on the Internet, and Dutch domain name market remains stable.

Domain name recuperation news, including: A tale of two “green labs”, Investigations are essential before filing a UDRP, and Respondent skillfully shows unbroken chain of possession.

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

Israel launches new IDN .ישראל

ISOC-IL, the Israeli domain name Registry operating the country code Top Level Domain (ccTLD) .IL, is soon to launch a new Internationalised Domain Name (IDN) ccTLD, .ישראל, which means “Israel” in Hebrew.

At the moment ISOC-IL allows the registration of .IL domain names at the third level, under various extensions including .co.il, .org.il and .net.il. Hebrew domain names have been allowed under these extensions since December 2010 (for example: ישראל.co.il). With the launch of .ישראל, which is only reserved for domain names written in Hebrew, it will now be possible for Hebrew domain names to have both the string and the extension in the same alphabet.

The launch of .ישראל follows a specific timetable and specific rules, with priority being given to current holders of matching Hebrew .IL domain names over other right holders (such as trade mark holders). The Registry has been contacting the domain name registrants concerned in order to inform them of their prevailing right to register the equivalent domain names under .ישראל during the initial Protected Registration Period, as explained below. It should be noted that where the same Hebrew .IL domain name was registered under two different extensions, for example under .co.il and .net.il, then the prevailing right goes to the holder of the domain name with the earliest registration date.

The launch of .ישראל is taking place as follows:

  • Sunrise period: 10 May 2022 – 10 July 2022
    This phase is reserved to holders of a registered Israeli trade mark (in Hebrew) and to local legal entities. The requested domain name must match the trade mark name or the legal entity name.
  • Review of Sunrise applications: 11 July to 15 August 2022
    After the Sunrise period ends, the Registry will review the Sunrise applications and contact the applicants with the results:
    • If the requested domain name under .ישראל already exists under .IL, then the Sunrise applicant will be informed that they do not have priority to register the .ישראל domain name. It is the .IL registrant with a prevailing right who will be able to register it.
    • If there is no corresponding .IL domain name, then the Sunrise applicant will obtain the right to register the domain name under .ישראל during the Protected Registration Period. If there are several Sunrise applications for the same .ישראל domain name, priority will be given to the Sunrise applicant who submitted its application first.
  • 1st Protected Registration Period: 5 September 2022 – 1 December 2022
    During this period the following applicants are guaranteed to be able to register their .ישראל domain names:
    • Existing registrants of a .IL domain name who have a prevailing right.
    • Sunrise applicants (with the earliest application) who are not up against holders of a prevailing right.
  • General availability: 5 September 2022 (in parallel to the Protected Registration Periods)

As from 5 September 2022, anybody can register any .ישראל domain name which is not reserved due to a prevailing right or a Sunrise application. Registrations will be on a first come, first served basis and there will be no registration requirement.

  • 2nd Protected Registration Period: 6 December 2022 – 6 February 2023
    Where holders of a prevailing right did not register their .ישראל domain names during the 1st Protected Registration Period, priority during this phase is then given to:
    • Registrants of existing matching Hebrew .IL domain names with the second earliest registration date,
      or, if there are none,
    • Sunrise applicants (with the earliest application).
  • 3rd (and last) Protected Registration Period: 7 February 2023 – 4 April 2023
    Where none of the holders of a prevailing right registered the .ישראל domain names, priority is then given to Sunrise applicants with the earliest application, if there are any.

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

The Registry’s page on .ישראל is also available here.

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ICANN seeks public comment on Transfer Policy Review

ICANN’s Transfer Policy Review Policy Development Process Working Group is currently seeking public comment on the preliminary recommendations contained in its Initial Report on the Transfer Policy Review Policy Development Process – Phase 1(a) (the Report), which is a review of the policy governing the rules and mechanisms for inter-registrar transfers.

ICANN’s Transfer Policy, which was formerly referred to as the Inter-Registrar Transfer Policy (IRTP), is an ICANN consensus policy that came into effect on 12 November 2004. It governs the procedure and requirements for registrants to transfer their domain names from one registrar to another. ICANN states that the goal of the Transfer Policy is “to provide for enhanced domain name portability, resulting in greater consumer and business choice, and enabling registrants to select the registrar that offers the best services and price for their needs.”

The Report notes that the Transfer Policy has been the subject of previous policy development work, notably when “sweeping and significant changes to various data privacy laws affected the then current requirements related to gTLD registration data, including portions of the Transfer Policy. Accordingly, the ICANN Board adopted the Temporary Specification for gTLD Registration Data, which established temporary requirements that allowed Contracted Parties to comply with ICANN contracts and consensus policies.” The Temporary Specification sought to ensure that the requirement for registrars to maintain “accurate, reliable, and uniform Registration Data based on legitimate interests” was not “outweighed by the fundamental rights of relevant data subjects, consistent with GDPR.”

Additionally, ICANN notes that the most recent working group that reviewed the Transfer Policy recommended a comprehensive review of the policy-based changes to assess their efficacy and impact. With that in mind, the Generic Names Supporting Organization Council (GNSO Council) initiated the current two-phase policy development process (PDP) to review the Transfer Policy in February 2021, which has resulted in the release of this Report.

The Report contains a number of preliminary recommendations on questions ranging from whether the “AuthInfo Code” should be renamed a “Transfer Authorization Code” (TAC) and whether such Code should be held by the Registry rather than by registrars, how long the TAC should be valid and whether a mechanism for the provision of bulk TACs could be envisaged. Other parts of the Report seek to eliminate terminology inconsistencies, with recommendations for terms such as “Whois” to be replaced with “Registration Data” and “Administrative Contact” with “Registered Name Holder”, in recognition of the fact that Administrative Contact data is no longer collected by registrars.

The subject of Denying (NACKing) transfers was also shifted from Phase 2 to Phase 1(a) pursuant to a Project Change Request in order to “ensure that the working group could examine all elements of the security model for domain name transfers in a holistic manner as part of its Phase 1 deliberations.” The report specifically looks at the question of whether there should be more flexibility for, or a change to the length of, the 60-day post-registration lock period. Ultimately, the working group recommends a 30-day Registry lock period, which it feels is sufficient in order to identify problems such as fraud or credit card abuse and to allow the filing of a UDRP whilst still remaining reasonable, but it asserts that this should be applied consistently across the industry.

The Report also sets out recommendations with regard to the reasons registrars MAY, MUST, MAY NOT and MUST NOT deny transfer requests and also recommends that the language governing the locking of a domain name pursuant to the filing of a UDRP complaint be strengthened in order to state:

The Registrar of Record MUST deny a transfer request in the following circumstances:

• Pending UDRP proceeding that the Registrar has been notified of by the Provider in accordance with the UDRP Rules.

This Public Comment proceeding, which opened for submissions on 21 June and closes on 2 August 2022, is presented in the form of a series of questions seeking input in relation to the specific recommendations in the Report. The working group will review the Public Comment submissions received on this Initial Report and consider whether any changes need to be made to its Phase 1(a) recommendations as well as moving to complete Phase 1(b) of its work, which will include a Phase 1(b) Initial Report followed by another public comment period on the same. All Phase 1 recommendations will be presented in a single Phase 1 Final Report to the GNSO Council.

In order to participate in the Public Comment proceeding please visit this website.

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EURid and ICANN – promoting multilingualism and inclusion on the Internet

EURid, the Registry responsible for running the European .EU Top Level Domain (TLD), has recently signed a Memorandum of Understanding (MoU) with the Internet Corporation for Assigned Names and Numbers (ICANN). The MoU aims to strengthen both organisations’ collaboration in “supporting Internationalized Domain Names (IDNs) and promoting the Universal Acceptance (UA) of all domain names and email addresses."

IDNs are domain names that contain at least one non-ASCII character – for example, a character with diacritics like é, ü, ñ, or a Chinese character like 飛. Registering IDNs is already possible in many country code Top Level Domains (ccTLDs) such as Belgium (.BE), Brazil (.BR), China (.CN), Hong Kong (.HK), France (.FR), Germany (.DE), Greece (.GR), Hungary (.HU), Spain (.ES) and Tuvalu (.TV), and in most generic Top Level Domains (gTLDs). So for EURid and ICANN, IDNs promote a “multi lingual Internet” as they enable people to register and use domain names in local languages and scripts. Under the .EU domain name extension it is already possible to register IDNs that contain characters from any official EU language script; for example, the Swedish å, the German ü, the Romanian ș and characters from the Bulgarian (Cyrillic) and Greek alphabets.

The idea of Universal Acceptance is a key component in supporting the use of IDNs because it aims to ensure that all domain names and email addresses “regardless of script, language, or character length” are accepted equally by all “Internet-enabled applications, devices, and systems”. In addition, UA encompasses supporting all IDN country code top-level domains (ccTLDs), as well as new IDN generic top-level domains (gTLDs).

ICANN President and CEO, Göran Marby, stated that: “supporting IDNs and Universal Acceptance is a priority for ICANN, and an important step toward an inclusive and multi-lingual Internet” and that “cooperation with global organizations like EURid is critical to making the Internet more accessible and viable not only for users across Europe but around the world.”

EURid’s General Manager, Peter Janssen, also asserted that:

EURid’s vision, as registry operator of .eu, .ею (Cyrillic script) and .ευ (Greek script), is to ensure a trustworthy .EU environment and to enable online multilingualism. Enabling Internet users to use domain names and email addresses in local languages and scripts used globally is a key element. This Memorandum of Understanding further strengthens our collaboration with ICANN and we look forward to jointly improve the Universal Acceptance of IDNs”.

It is only natural that increased diversity and inclusiveness should be reflected on the Internet and across the global domain name ecosystem. It is to be hoped that this openness towards local languages and scripts is replicated in other ccTLDs across the globe.

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Dutch domain name market remains stable

SIDN, the organisation responsible for the management of the country code Top Level Domain (ccTLD) .NL (Netherlands), recently published an article indicating that the domain name market remained stable both in the Netherlands and globally. Nevertheless, with the global economy seeing the worst economic downturn since World War II, this will undoubtedly have implications for the domain name industry.

After the last couple of rather turbulent years, the Dutch market now seems to be stable, with registrations remaining at least at the same level as they were prior to the pandemic. This would seem to be due to businesses that moved online during lockdown, keeping their websites active, while other businesses continue to invest in their online presence. The current count for domain names registered by Dutch registrants stands at around ten million, which represents an increase of less than 0.1 percent and, of these, approximately 6.25 million are .NL domain names.

However, it seems that the interest of Dutch companies in international markets and the registration of domain name extensions other than .NL has been rekindled. For example .COM domain names registered by Dutch-based companies increased by four percent over the last twelve months and not far behind were registrations using the extensions of its neighbours - .DE (Germany), .FR (France) and .BE (Belgium). The same cannot be said for .EU (European Union) where the number of Dutch-registered domain names fell by 1.5 percent in the space of a year.

As of 27 June 2022, there were 6,610,973 domain names registered under .NL, which put .NL in 9th place in the list of the top ten ccTLDs, as set out below:

  1. .TK 26,320,012
  2. .CN 25,406,125
  3. .DE 22,989,792
  4. .UK 19,742,805
  5. .RU 10,679,323
  6. .GA 8,805,172
  7. .CF 7,236,654
  8. .ML 7,106,100
  9. .NL 6,610,973
  10. .BR 5,598,719

Although new domain name registrations have slowed, there is still growth and the global domain name market remains stable, so only time will tell what the real effects of the current downturn in the global economy will be.

For more information on domain name registrations, please contact David Taylor or Jane Seager.

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A tale of two “green labs”

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of the Domain Name at issue, finding no indicia of cybersquatting, despite both parties being engaged in the “green labs” movement and both using three word domain names containing the words “green“ and “lab”.

The Complainant was My Green Lab, Corp., a US-based nonprofit corporation founded in 2013 and engaged in building a global culture of sustainability in science. It held a US trade mark for MY GREEN LAB, which was registered in 2014 with a disclaimer regarding the absence of exclusive rights to use “Green Lab”. It also registered its domain name mygreenlab.org in 2013 and used it to redirect to its official website providing related resources and programs.

The Respondent, “Green Your Lab”, was a volunteer-run free network involved in the green labs movement, based in Belgium.

The Domain Name greenyourlab.org was registered by the Respondent in April 2020 and was associated with its website headed “Green Your Lab | Network of Sustainable Science and Green Lab Enthusiasts”.

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 incorporated the terms “Green” and “Lab”, which constituted a dominant feature of its MY GREEN LAB mark. The Respondent’s substitution of the possessive adjective “my” for the possessive adjective “your” could not prevent a finding of confusing similarity between the Domain Name and its trade mark. Such confusion was further reinforced by the content of the associated website as the Respondent used similar colour schemes, topics and icons as those on the Complainant’s official website. The

Respondent argued that the Complainant was not entitled to exclusive use of the disclaimed terms “Green Lab” and the “look and feel” of their websites did not appear similar.

The Panel first pointed out that a finding of confusing similarity would still be possible despite the disclaimer associated with the trade mark in question. The key question arose as to whether the Complainant’s trade mark was recognisable by virtue of the identified similarities (i.e., “green” and “lab”). According to the Panel, there were significant differences between the trade mark and the Domain Name since the two common terms were deployed in quite different manners and therefore perceived differently. The MY GREEN LAB trade mark focused on the possessive adjective “my” while the Domain Name focused on its first term “green”, which was actually used as a verb, meaning to make planet-friendly and sustainable. Furthermore, from a conceptual perspective, the “lab” within the meaning of the Domain Name had not yet been made green, which was not the case for the “lab” as referred to in the trade mark. Consequently, based on a side-by-side comparison approach together with a conceptual analysis, the Panel doubted that the incorporation of the terms “green” and “lab” in the Domain Name would be sufficient to give rise to a finding of confusing similarity. Since both parties referred to the content of the website associated with the Domain Name under the first limb, the Panel also examined this and found that a degree of similarity between the two parties’ sites was to be expected in this case given that they were both dedicated to the concept of “green lab”. The Panel finally highlighted that it was unnecessary to reach a definite conclusion under the first limb in light of its findings under the second and third limbs as detailed below.

Regarding the second limb, the Complainant asserted that the Respondent’s founder became its ambassador in October 2020 and used its contact list in July 2021 to reach out to other members of the ambassador network to beta-test the Respondent’s website and network, misleadingly claiming an affiliation between the two organizations. Such use of the Domain Name to intentionally divert users away from the Complainant’s site to the Respondent’s competing site, obviously for commercial gain, could not give rise to any rights or legitimate interests in the Domain Name under the second limb. The Respondent claimed that its website and networking platform were perfect examples of bona fide use and it was commonly known by the Domain Name by virtue of its Twitter page, which had been continuously used since 2019 and had over 1,000 followers at the time of filing of the Complaint. It further highlighted that its website was run completely by volunteers with no fees charged and no sponsorship funding so it was making a legitimate noncommercial use of the Domain Name. In particular, the Respondent explained that its email to the Complainant’s contact list merely resulted from a miscommunication regarding the partnership between the parties and was not tied to any attempt to use the Domain Name in a misleading manner.

The Panel considered that the Complainant had made out a required prima facie case that the Respondent lacked rights and legitimate interests in the Domain Name, which shifted the burden of proof under the second limb to the Respondent. The Panel first found that the Respondent was indeed making bona fide use of the Domain Name under the circumstances, noting that its use of “green lab” was descriptive and thus disclaimed in the Complainant’s trade mark. The objectively perceived differences between the Domain Name and the trade mark, as addressed under the first limb, further reduced the likelihood of confusion. More importantly, based on the previous correspondence between the two parties, the Panel held that the Respondent’s action in seeking a potential noncommercial partnership in the area of the “green labs” movement did not strike the Panel as being the action of a typical cybersquatter. The Panel then found that the Respondent had been commonly known by the Domain Name, notably as a result of its Twitter account, “@GreenYourLab”, which had been activated six months prior to the registration of the Domain Name and had attracted some 1,000 followers since then. In the Panel's opinion, this sufficiently demonstrated that the Respondent had built up an online existence as “Green Your Lab” independently of the Domain Name and well before its registration. The Panel also noted that the Respondent had described itself as “Green Your Lab” on the WhoIs record of the Domain Name. Finally, the Panel was satisfied that the Respondent was using the Domain Name on a noncommercial basis, and the overall facts of this case, such as the nature of the Domain Name (the risk of implied affiliation with the Complainant’s mark was quite low), the parties’ previous correspondence and the genuine connection between the Respondent’s website content and the Domain Name, were supportive of a claimed fair use for legitimate purposes and not a pretext for commercial gain. Consequently, the Panel was of the view that the Respondent had successfully rebutted the Complainant’s prima facie case and the second limb of the UDRP was not satisfied.

For the sake of completeness, the Panel briefly examined the third limb regarding the Respondent’s registration and use of the Domain Name. The Panel disagreed with the Complainant’s assertion that the Respondent’s actual knowledge of the Complainant’s trade mark rights when registering the Domain Name was automatically indicative of bad faith in the present case, and was not convinced of the Respondent’s intent to target the Complainant in an act of cybersquatting. The Panel also found that the Respondent appeared to have engaged in good faith in the legitimate activity of operating a noncommercial network under the name “Green Your Lab”. The third limb was therefore not satisfied.

Comment

In this 11-page decision, the Panel provided a thorough and rigorous analysis of each requirement under the UDRP in light of the circumstances of this interesting case, notably with regard to the confusing similarity test under the first limb and the Respondent’s rights and legitimate interests in the Domain Name. Although the UDRP is designed for relatively straightforward cases, the circumstances may reflect a certain degree of complexity, requiring each party to carefully prepare their arguments and supporting evidence. In conclusion, the Panel also underlined that whether or not the use of a domain name constituted infringement of a trade mark within a certain jurisdiction was an issue beyond the scope of the UDRP. It is worth noting that trade mark infringement and abusive registration of domain names within the meaning of the UDRP are not always the same thing, although there may be some conceptual overlap, and this is often overlooked by complainants.

The decision is available here.

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Investigations are essential before filing a UDRP

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied a UDRP complaint for the disputed Domain Name labe.com, finding that the Complainant had failed to prove that the Respondent had no rights or legitimate interests and had registered and used the Domain Name in bad faith, and entering a finding of Reverse Domain Name Hijacking (RDNH).

The Complainant was Law and Business Enterprises Worldwide S.L., a Spanish company established in 2009. The Complainant provided legal, accountancy, securities assets management and tax services for a variety of entities. It traded as LABE and owned a figurative Spanish trade mark for LABE, registered on 23 September 2010. It also owned a number of domain names comprising the word LABE, including labe.es, redirecting to a website providing information about its services.

The Respondent was Rada Ann Labé, an individual who had practised as a real estate agent in the United States. She registered the Domain Name labe.com on 9 June 1998, and it had previously resolved to a website containing information about her real estate practice. Archived screen captures from the Wayback Machine showed that as of October 2014, the Domain Name resolved to a website featuring a biography about the Respondent and containing her contact details. Although the Respondent’s website was inactive at the time that the Complaint was filed, she continued to use email addresses associated with 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.

As far as the first limb was concerned, the Panel found that the Complainant had established rights in the LABE trade mark, and that the Domain Name was identical to the Complainant’s registered trade mark.

With regard to the second limb, the Complainant alleged that the Domain Name had been inactive since the date of registration. According to the Complainant, the Respondent did not own any trade mark or trade designation that had any connection with the Domain Name, nor had she made any serious preparations to use the Domain Name in connection with a bona fide offering of goods and services. As such, the Complainant claimed that the Respondent’s registration of the Domain Name did not reflect a desire to use it in connection with her own activities, but rather to take advantage of the notoriety of the Complainant’s LABE trade mark and its labe.es domain name.

In response, the Respondent stated that she had registered the Domain in 1998 and had been using it to resolve to a website promoting her real estate business and for her email addresses. She argued that her website was taken down very recently as she no longer had any need to use it for the promotion of her business.

The Panel considered that the Respondent had produced evidence that she was commonly known as “Ann Labe” or “Rada Ann Labe”, including screen captures of her Twitter Account, her entry in an online directory of real estate agents, her Arizona and California Real Estate licenses, and her biography on the website to which the Domain Name had previously resolved, each of which had recorded her name as “Ann Labe” or “Rada Ann Labe”. The Panel took the view that the Respondent had demonstrated that she was commonly known by her surname, Labe, which corresponded to the Domain Name, and found that the Complainant had failed to establish that the Respondent had no rights or legitimate interests.

Regarding the third limb, the Panel noted the Domain Name had been registered over ten years before the Complainant was established and approximately twelve years prior to the registration of the Complainant’s LABE trade mark. Accordingly, the Panel found that the Respondent could not have had the Complainant and its eventual use of LABE in contemplation as at the date of her registration, as it did not come into existence until over a decade later. The Panel disagreed with the Complainant’s allegation that the Domain Name not currently resolving to an active website could comprise bad faith use under the doctrine of passive holding, in that the factors allowing this doctrine to be applied were absent in the present case, such as the failure of the respondent to submit a response or to provide any evidence of actual or contemplated good-faith use, as well as the implausibility of any good faith use to which the domain name may be put. Except in certain specified circumstances, the Panel was of opinion that bad faith would not be found where the domain name at issue had been registered prior to the complainant’s registration of its mark. In light of the above, the Panel concluded that the Complainant had failed to establish bad faith registration and use by the Respondent.

In its finding that the Complainant had engaged in RDNH, the Panel was of the opinion that the Complainant had failed to properly investigate the facts. The Complainant had made a series of misconceived and irrelevant allegations against the Registrar and had shown a lack of understanding of the UDRP. Moreover, many of its assertions were factually incorrect. The Panel noted that the evidence available to the Complainant, such as the WhoIs record, should have made it apparent to the Complainant that it was likely to encounter substantial difficulties in establishing bad faith registration by the Respondent. A Google search or a basic search for archived screen captures of the Domain Name would have revealed the Respondent’s prior use. The Complainant's decision to proceed with the Complaint meant that the Respondent was obliged to file a Response, and the Panel noted that the Policy should not be misused in this manner. The Panel therefore found that the Complaint was brought in bad faith and made a declaration of Reverse Domain Name Hijacking.

Comment

This decision once again illustrates that a complainant should think twice before filing a complaint under the UDRP when a domain name registration substantially pre-dates their trade mark rights, in which case bad faith can only be established in very limited circumstances. In this particular case, the mere fact that the Domain Name was not resolving to an active site at the time of filing was insufficient, as it had previously been used in good faith, and such information can be obtained through consultation of publicly-available resources, including the Wayback Machine available at www.archive.org. Furthermore, the Domain Name corresponded to the Respondent’s surname and was still being used for email. Trade mark owners should therefore find out as much as possible about a domain name registrant and previous use of a domain name to gather reliable and convincing evidence of bad faith before filing a UDRP, otherwise their complaint may be denied.

The decision is available here.

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Respondent skillfully shows unbroken chain of possession

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 three-member Panel refused to order the transfer of a domain name because it found that the Complainant had failed to demonstrate that the Respondent had registered the domain name in bad faith.

The Complainant was Skillful Communications, Inc., an American company providing interview and career-related training for both individuals and companies.

The Respondent was Aquent, LLC, an American staffing company and provider of temporary employees.

The disputed domain name, skill.com, was registered by the Respondent's predecessor in 1995. Since the registration of the disputed domain name, the Respondent had changed its name twice: in 1999 to Aquent, Inc. and around 2007 to Aquent, LLC. At the time when the Complaint was filed, the disputed domain name resolved to a website promoting a network of recruiters, boutique agencies and global search firms operated by a company called Scout Exchange LLC, a company under common ownership with the Respondent.

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 trade mark rights in the term SKILLFUL since 2010 and in the term SKILL since 2020. In addition, the Complainant submitted that it owned various domain names, including skillfullydone.com and skill.net. The Complainant also argued that the disputed domain name was identical to its SKILL mark and confusingly similar to its SKILLFUL mark.

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 could not claim trade mark rights in "SKILL.COM", given that any rights in this term were abandoned at least twenty years ago. More specifically, the Complainant submitted that between 2000 and 2009, the disputed domain merely resolved to a page containing a message stating that "SKILL.COM has changed its name to Aquent". Then, between 2009 and 2020, the disputed domain name was redirected to websites at "www.aquent.com" or "www.aquent.us". The Complainant further contended that the disputed domain name was recently transferred to Scout Exchange, LLC, despite the fact that the underlying registrant details still mentioned the Respondent's data. Moreover, the Complainant argued that, since the recent transfer, the disputed domain name started pointing to a website that contained design and messaging elements similar to those of the Complainant’s website, and mimicked the same colour scheme. As such, the Complainant argued that the Respondent was using the disputed domain name to misleadingly attract internet users to a website operated by the Respondent or its affiliates.

The Respondent rebutted these arguments by stating that it had been operating as a staffing company since the 1980s and that its trade mark rights predated the Complainant’s rights. The Respondent contended that the disputed domain name was registered in 1995 and that its subsequent transfer by Aquent, Inc., to its subsidiary Aquent, LLC, did not constitute a new registration as it was done in good faith in furtherance of a legitimate business purpose. Moreover, the Respondent underlined that, contrary to the Complainant's arguments, the disputed domain name was not recently transferred to Scout Exchange, LLC, but only licenced to it. The Respondent added that Scout Exchange, LLC was its sister company.

In light of its findings under the third limb of the Policy, the Panel did not comment on the first two requirements. Turning to the third limb of the Policy, the Complainant argued that the transfer of the disputed domain name between 2007 and 2008 constituted a new registration that occurred after the Complainant had developed its trade mark rights in the term SKILLFUL. Furthermore, the Complainant contended that a second transfer, and new registration, took place between 2020 and 2021. In addition, according to the Complainant, the Respondent used the disputed domain name in bad faith to misleadingly attract internet users to a website which was "strikingly similar" to the Complainant’s. On the other hand, the Respondent highlighted that it registered the disputed domain name in 1995, well before the Complainant started operating. The Respondent also argued that the Complainant could not monopolise the common English word "skill". Finally, the Respondent asserted that it legitimately used the disputed domain name in connection with its activity.

The Panel found that the transfer of the disputed domain name around 2007 appeared to simply be a change in relation to which company within the corporate family would hold the disputed domain name. The Panel observed that there was no evidence that such transfer was done to take advantage of any trade mark rights the Complainant might have claimed in its SKILLFUL mark. When it came to the use of the disputed domain name by Scout Exchange, LLC in 2021, the Panel considered that the Respondent was not targeting the Complainant within the meaning of the UDRP. The Panel explained that the disputed domain name consisted of a common word, that there existed multiple parties using the same term in their trade marks, and that the Respondent’s services were different from those offered by the Complainant. 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 transfer of the disputed domain name was denied.

Comment

This decision illustrates that where a respondent can provide evidence of an unbroken chain of possession of a disputed domain name, the changes to registrant contact information in the WhoIs record will not be treated as a new registration. This is why it is important to conduct a thorough search on the owner of a domain name prior to commencing UDRP proceedings. It is useful (where possible) to understand the registrant's history and structure and, as a consequence, to establish the date that the Panel will take into consideration when assessing bad faith registration. One should also bear in mind that in order to be sure that a chain of possession of the disputed domain name can be considered legitimate and therefore unbroken, Panels may consider, amongst other things, the strength of a complainant’s mark and whether the transfer has resulted in a change of use specifically to take advantage of a complainant’s rights.

The decision is available here.

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