This is the November / December 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: To .GB or not to .GB, that is the question; A new Registry for .TV; and EURid Report provides quarterly overview of .EU domain names.
Domain name recuperation news, including: Ignoring well-established UDRP principles results in RDNH; Complaint falls at the first hurdle; and Let’s have a toast for the .IO Policy!
Domain name industry news
To .GB or not to .GB, that is the question
Earlier this month, the UK Government’s Central Digital and Data Office (the CDDO) published a blog post discussing the question of whether it was time to retire the .GB Top Level Domain and inviting comment on its proposal to do so.
The blog post was prompted by a housekeeping exercise being carried out by the Securing Government Services team at CDDO to clean up and remove legacy services. As part of that exercise, the blog post states that “we are considering whether we should remove the .gb top level domain from the internet.”
As the CDDO points out in its blog post, “it is staggeringly unlikely that you would ever have encountered a .gb domain in the wild. The only domain which is registered, though inactive, is hmg.gb – standing for His Majesty’s Government”. The domain was originally created in the mid-1980s and abandoned during the 1990s and there are no active domain names which use .GB today.
The CDDO states in its blog post that, administratively, it would be quite simple to retire .GB as it would just be a question of telling the Internet Corporation for Assigned Names and Numbers (ICANN) that .GB is “no longer needed, and it can thus be removed from the Internet.” However, .GB is a country code Top Level Domain (ccTLD) and all ccTLDs owe their existence to the fact that they are on, or have been added to, the International Organization for Standardization (ISO)’s ISO 3166 list, the globally authoritative list of two-letter country codes.
ICANN only recently (in September 2022) discussed its proposed policy on retirement of ccTLDs, a policy which is due to be considered by the ICANN Board of directors soon. As this body has previously pointed out, it is “not in the business of deciding what is and what is not a country” and even if it were to approve the retirement of a ccTLD, the Internet Assigned Numbers Authority (IANA) would then need to decide whether the change warranted initiating the retirement process, which, it seems, would take at least five years.
Under the headings “To domain” and “To not domain”, the CDDO blog post lists a number of pros and cons to getting rid of the .GB TLD. On the pro side, they state that removing “obsolete top level domains” will “free up resources” and save money as there will be “one less resource to monitor for security issues”.
Arguments put forward against the proposal to retire .GB include the risk that, if handed back, another country might try to claim the TLD for itself, however the CDDO judges this risk to be extremely low in view of the ISO 3166 policies.
The blog post ends with the following statements from the CDDO:
“So, it is our intention to inform ICANN early in 2023 that the UK wishes to retire .gb. We expect this to be a straightforward administrative procedure.”
before going on to state that it is “contacting organisations which we think might be interested in this proposal and will assess their responses”. It also invites visitors to the blog to leave a comment on the blog post.
A new Registry for .TV
Last December, the management of the country code Top Level Domain (ccTLD) for Tuvalu, .TV, was taken over by GoDaddy Registry further to a competitive tender process. GoDaddy Registry recently announced that the transition was now complete and organised a large marketing campaign to promote the relaunch of .TV.
Tuvalu, a small and remote Polynesian island nation located in the Pacific Ocean and actually the fourth smallest nation in the world, with a population of about 11,000, generates a significant part of its revenue through the lease of its popular ccTLD .TV – the worldwide abbreviation for “television”. As Anchovy News readers will know, before GoDaddy took it over, .TV had been administered by .COM operator VeriSign Inc. for 20 years. According to a 2019 article from the Washington Post, the revenues generated back then amounted to about 1/12th of Tuvalu’s annual gross national income.
The new contract with GoDaddy Registry is economically important for the fourth smallest nation in the world which relies heavily on foreign aid and faces the alarming risk of sinking if sea levels continue to rise due to global warming. On this topic, Simon Kofe, Tuvalu’s Minister for Justice, Communication and Foreign Affairs, said: “As we seek to secure Tuvalu’s digital future in the face of rising sea levels, our partnership with GoDaddy Registry will provide much needed support to our country and our cause”.
On 15 November 2022, GoDaddy Registry re-launched the ccTLD with “a complete rebrand and marketing makeover.” If .TV has always been popular due to its obvious meaning, GoDaddy has a larger vision for it and is advertising it as “a powerful domain brand synonymous with online video, animation and streaming content”, making it “the online home for content creators”. Its brand new website is a reflection of this and seeks to appeal to “bloggers, YouTubers, Twitch Streamers, Instagram Influencers, TikTok Stars, and everyday entrepreneurs”.
In a similar way, other ccTLD Registries have taken advantage of the meaning of their two-letter ccTLDs and have marketed them as such; for example, .ME for Montenegro (for its personal meaning in many languages), .LA for the Lao People’s Democratic Republic (advertised as the TLD for Los Angeles), or .IO for the British Indian Ocean Territory (advertised as “the domain for tech websites”, “IO” meaning “input/output” in computer science), among others.
GoDaddy Registry’s extensive marketing campaign will undoubtedly raise interest for the already popular .TV extension. It will be interesting to see to what extent this will further the growth of the .TV namespace.
For more information on the registration or recuperation of .TV domain names, please contact David Taylor or Jane Seager.
EURid Report provides quarterly overview of .EU domain names
EURid, the Registry responsible for running the .EU country code Top Level Domain (ccTLD), recently published its Q3 2022 progress report which included its quarterly statistics for .EU.
At the end of Q3 2022, EURid recorded a total of 3,721,099 domain name registrations, which represented a net increase of 131,649 registrations. EURid also noted that registrations by registrants based in Portugal had the highest rate of growth, at 7.3% during Q3 2022, followed by Norway and Slovenia with registration growth rates of 4.5% and 1.4%, respectively. During Q3 2022, EURid also recorded 5,059 new multi-year domain name registrations (it is possible to register and renew .EU domain names for a period of between 1 to 10 years).
Germany was the country with the highest number of .EU domain names recorded, with some 1,002,657 domain names, followed by the Netherlands with 462,937 domain names and France with 307,249 domain names. In addition, EURid recorded an average domain name renewal rate of 85%.
There were 16 Domain Name Disputes filed in Q3 2022, with disputes filed under the Alternative Dispute Resolution procedure with the Czech Arbitration Court (CAC) and WIPO Center.
The quarterly report also highlights other achievements during Q3 2022, such as EURid revealing the names of the five jury members of the 2022 .EU Web Awards. The Web Awards is an online competition that EURid launched in 2014 and is designed to acknowledge the best websites using the .EU, .ею (Cyrillic) and .ευ (Greek) top-level domain extensions.
During Q3 2022, EURid also modified its Terms and Conditions for .EU domain names, in order to (i) comply with the new legal framework for .EU domain names (Regulation 2019/517 of the European Parliament and of the Council of 19 March 2019 and its accompanying Acts), (ii) combine the revised Terms and Conditions and Registration Policy into one document and (iii) remove the procedural and technical information from the Registration Policy.
Lastly, the quarterly report also mentioned that EURid has 52 employees working across their four offices in Diegem (Belgium), Pisa (Italy), Prague (Czech Republic) and Stockholm (Sweden).
To visit EURid’s website, please click here.
For more information on the registration or recuperation of .EU domain names, please contact David Taylor or Jane Seager.
Domain name recuperation news
Ignoring well-established UDRP principles results in RDNH
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a three-member Panel denied the transfer of projectpay.com (the Disputed Domain Name). The decision was on the basis that the Complainant had failed to show that the Respondent registered the Disputed Domain Name in bad faith, and the Panel entered a finding that the Complainant had engaged in Reverse Domain Name Hijacking (RDNH).
The Complainant was ProjectPay Pty Ltd, an Australian company that started running an online payment and accounting platform for use in the construction industry in 2015. The Respondent was an individual based in Canada.
The Respondent registered the Disputed Domain Name projectpay.com on 27 June 2001.
The Complainant owned various trade mark registrations for the word mark PROJECTPAY throughout the world, including in Canada and a supplemental registration in the United States. The earliest of the Complainant’s trade marks was registered on 29 May 2017.
The Complainant also had registered domain names containing the trade mark PROJECTPAY dating back to May 2017.
To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements under paragraph 4(a):
(a) The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(b) The respondent has no rights or legitimate interests in respect of the domain name; and
(c) The disputed domain name has been registered and is being used in bad faith.
In relation to the second limb, the Complainant argued that the Respondent had no rights or legitimate interests in the Disputed Domain Name. In response, the Respondent contended that it did in fact have rights or legitimate interests as the Disputed Domain Name was a two-word domain name registered for prospective use by the real estate development company with which the Respondent was engaged
Regarding the third limb, the Complainant argued that, by registering the Disputed Domain Name, the Respondent intended to take advantage of the Complainant’s activities as it was offering items that were identical or directly related to the Complainant’s goods and services on the webpages to which the Domain Name resolved. The Complainant also argued that the Respondent was aware of the Complainant’s business and had intentionally attempted to attract internet users to the corresponding webpages for financial gain by creating a likelihood of confusion with the Complainant’s trade mark. In addition, the Complainant asserted that the Respondent was attempting to interfere with the Complainant’s business and was preventing the Complainant from reflecting its business name in the .COM Top-Level Domain.
In response, the Respondent argued that it simply could not have registered the Disputed Domain Name in bad faith in 2001 as at that time the Complainant’s rights were non-existent. The Respondent also noted that the Complainant had made no attempt to explain how the Disputed Domain Name was registered in bad faith.
In relation to the first limb, the Panel accepted that the Complainant owned registered trade marks for PROJECTPAY and that the Disputed Domain Name included the trade mark in its entirety and was therefore identical to the trade mark in which the Complainant had rights.
The Panel found that it was not required to consider the second limb in light of its analysis of the third limb.
In this regard, the Panel found that the Complainant had not satisfied the third limb as it had failed to make out a case that the Respondent had registered the Disputed Domain Name in bad faith. Importantly, the Panel noted that the Respondent’s registration of the Domain Name was at least 14 years before the Complainant was established and acquired trade mark rights. The Panel referred to section 3.8 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, 3.0, and found that this timing precluded a finding of bad faith registration since the Respondent had registered the Disputed Domain Name at a time when the Complainant was not yet established and had no rights in the trade mark. As a result, the Respondent could not possibly have been aware of the Complainant and its business or known about the Complainant’s trade mark rights when registering the Disputed Domain Name.
Reverse Domain Name Hijacking
The UDRP Rules define Reverse Domain Name Hijacking (“RDNH”) as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”. Last but not least, the Panel found that the Complainant knew or should have known at the time of filing the Complaint that it was unable to prove one of the essential elements required by the UDRP, namely registration in bad faith. The Panel noted that it was “very clear” that the Respondent had registered the Domain Name many years before the Complainant came into existence and filed and registered the PROJECTPAY trade mark.
The Panel noted that the Complainant or its attorney must have been fully aware of the cumulative requirements of registration and use in bad faith when filing the Complaint, given the statements included therein, and therefore found that the facts justified a finding of RDNH.
This case highlights the need for complainants to consider carefully whether they should file a UDRP Complaint if the trade mark on which they intend to rely was registered after the disputed domain name was registered. In line with well-established UDRP precedent, where a complainant did not exist at the time that a disputed domain name was registered, such a complaint will almost universally result in a denial, even where a complainant holds an identical trade mark at the time of filing of the Complaint. While there is an exception to this rule, the circumstances in which the exception will apply are limited. A failure to ignore such well-established principles laid down over a substantial body of UDRP cases will, more often than not, lead to a finding of RDNH.
Complaint falls at the first hurdle
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 majorslawgroups.com. The Panel found that the Complainant did not enjoy common law rights in the claimed mark and so did not have standing to bring the Complaint.
The Complainant, Majors Law Group, P.C, was a US law firm specialised in debt relief agency. The Complainant was founded on 1 June 2019 in Arizona and expanded to Washington state in 2021. The Complainant provided legal services under the name “Majors Law Group” and promoted its services on its website in connection with the domain name majorslawgroup.com but did not own any registered trade marks for “Majors Law Group” or “Majors Law Group P.C.”.
The disputed Domain Name was registered on 8 June 2021 with the registrar OVH. At the time of filing the Complaint, the disputed Domain Name resolved to a website in English that provided criticism of the Complainant and its attorneys.
Originally the Respondent’s identity was concealed behind a privacy service, but the Registrar subsequently revealed that the Respondent was an individual. The underlying registrant details showed that the Respondent was based in Mexico, but his social media accounts indicated that he was based in California, United States.
The Complainant argued that it enjoyed unregistered or common law rights in the trade mark “Majors Law Group” (or “Majors Law Group P.C.”). It claimed that it had represented over 2,000 clients in Arizona since 2019 and had provided legal services under this trade mark continuously and extensively since 1 June 2019.
The Complainant submitted that as a result of its continuous and extensive use of the “Majors Law Group” trade mark, the trade mark had accrued substantial goodwill and was known locally, in at least Arizona and Washington state, to represent its law firm.
The Complainant argued that the disputed Domain Name was identical or effectively identical to its “Majors Law Group” trade mark.
The Complainant also submitted that the Respondent had no rights or legitimate interests in the disputed Domain Name. Although the Respondent had a right to establish a website for the purpose of legitimate criticism and commentary, the Complainant argued that it may not do so via a domain name that was identical or confusingly similar to the Complainant’s trade mark and domain name. The Complainant added that the Respondent registered the disputed Domain Name for the sole purpose of confusing and diverting Internet users from the Complainant’s website to the Respondent’s defamatory site, which did not constitute fair or noncommercial use and, furthermore, constituted registration and use in bad faith.
The Respondent did not submit a Response to the Complaint.
To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements:
- 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
- The respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
Under paragraph 4(a)(i) of the UDRP, the Panel found that to establish common law trade mark rights, the Complainant must show that its claimed mark had become a distinctive identifier that consumers associated with its goods or services. To show this, the Complainant must provide specific evidence on a range of factors including the duration and nature of use of the trade mark, the amount of sales under the trade mark, the nature and extent of advertising and the degree of actual public recognition.
The Panel found that the Complainant had not presented any evidence in support of its claimed common law rights in the trade mark. Rather, the Complainant had made assertions, unsupported by evidence, that it had made continuous and extensive use of the trade mark for three years, including that it had represented over 2,000 clients in Arizona since 2019.
In light of the absence of evidence adduced by the Complainant, the Panel used its general powers under paragraphs 10 and 12 of the Rules for UDRP to view the Complainant’s website and the website to which the disputed Domain Name resolved. The Panel found that although both websites referred to the Complainant as “Majors Law Group”, the content of these websites was not sufficient for the Complainant’s claimed trade mark to enjoy acquired distinctiveness and for the Complainant to have accrued common law rights in the trade mark.
In particular, the Panel noted that the logo displayed on the Complainant’s website with the words “Arizona’s Premier Law Firm” and the graphic of five stars and two badges with laurel wreaths did not constitute awards or ratings that indicated public or industry recognition.
The Panel also considered whether the Respondent’s challenges to the Complainant on its website (including the challenge to the Complainant’s assertion that it had represented 2,000 clients despite only having been licensed for two years) constituted evidence of recognition of the Complainant’s trade mark. Ultimately, the Panel found that the challenges were insufficient for common law rights to have accrued in the claimed trade mark.
The Panel found that the Complainant failed to satisfy the first element of paragraph 4(a) of the UDRP and so lacked standing to bring the Complaint.
The Panel also rejected the Complainant’s additional claim that the disputed Domain Name was identical or confusingly similar to its own domain name, majorslawgroup.com, noting that the first element of paragraph 4(a) of the UDRP requires a demonstration of identity or confusing similarity to a trade mark or service mark.
This case falls into the rare class of cases where a complainant is found not to have standing to bring a complaint under paragraph 4(a)(i) of the UDRP. The decision highlights the importance of providing specific evidence across a range of factors when seeking to prove common law rights, including but not limited to the duration and nature of use of the trade mark, the amount of sales under the trade mark and the degree of actual public recognition. Where a complainant cannot or does not produce evidence of its common law rights in a trade mark and instead makes conclusory allegations, the complaint will almost universally result in a denial, even if the complainant’s allegations are undisputed.
The decision is available here.
Let’s have a toast for the .IO Policy!
In a recent decision under the .IO Domain Name Dispute Resolution Policy (.IO Policy) before the World Intellectual Property Organization (WIPO), a Panel ordered transfer of the Domain Name toast.io, finding that the Respondent used the Domain Name in bad faith to redirect to websites of direct competitors of the Complainant, the Respondent’s former client.
The Complainant, Toast, Inc., was a United States cloud-based restaurant software company offering an all-in-one platform including TOAST point of sale hardware and apps for restaurants to connect restaurant employees and operations with restaurant guests. It was the owner of several word and figurative trade marks for TOAST registered between 2015 and 2021. Despite the Complainant’s assertions that it had unregistered trade mark rights from September 2012, the Panel found that the Complainant had established acquired distinctiveness for the TOAST trade mark from March 2015.
The Respondent was Domain Protection Services, Inc., United States / Jeff Bennett, Bennett Global Group, LLC, United States. According to its website, the Respondent was offering “business consulting for corporate development, domain brokerage and the development & execution of dynamic training programs”. The Respondent listed the Complainant as a client on its “Clients” page, displaying one of the Complainant’s figurative trade marks.
The Domain Name was toast.io. According to the WhoIs record of the registrar with which the Domain Name was registered, the Domain Name appeared to have been registered on 17 April 2012 in the name of a domain privacy service. In response to WIPO’s standard request for registrar verification, the registrar noted that it could not be determined when the current registrant registered or acquired the Domain Name. It was therefore unclear if the Respondent was the original registrant of the Domain Name. Relying on the Respondent’s website, the Panel noted that the Complainant was formerly a client of the Respondent. It appeared from an agreement submitted in support of the Complainant’s contentions dated 1 May 2018 that the Complainant had engaged the Respondent to assist the Complainant in acquiring domain names. The Complainant also attached a redacted memo dated December 2018, purportedly from the Respondent’s broker, reporting “good calls” with the owner of the Domain Name. According to the Complaint, the Complainant did not ultimately reach an agreement to acquire the Domain Name. Further to the filing of the Complaint, the Complainant discovered that the Respondent had not disclosed that the Respondent itself was the owner of the Domain Name (or that the Respondent had subsequently acquired it), while acting as the Complainant’s agent to explore the acquisition of the Domain Name. At the time of the Panel’s decision, the Domain Name had been redirecting to websites belonging to the Complainant’s competitors since December 2021, after being inactive for years.
The Respondent did not come forward to submit a Response to the Complaint.
To be successful under the .IO Policy, a complainant must satisfy the requirements of paragraph 4(a) of the .IO Policy:
(i) the disputed domain name is identical or confusingly similar to a trade mark 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 or is being used in bad faith.
As noted by the Panel, the .IO Policy is very similar to the Uniform Domain Name Dispute Resolution Policy (UDRP) and only differs in that it requires a demonstration of bad faith either at the time of registration of the domain name or in subsequent use (as opposed to both bad faith registration and use). Therefore the Panel held that reference to the WIPO Overview of UDRP jurisprudence and decisions under the UDRP would be made as appropriate.
As far as the first limb was concerned, the Panel found the Domain Name to be identical to the Complainant’s TOAST word mark and confusingly similar to its TOAST-formative marks. Thus the Complainant satisfied the first element set out in paragraph 4(a) of the .IO Policy.
Moving on to the second requirement and a respondent’s rights or legitimate interests (or lack of them), the Panel referred to section 2.1 of the WIPO Overview 3.0, according to which a complainant is normally required to make out a prima facie case and it is then for the respondent to rebut that case. If the respondent fails to do so, then the complainant is deemed to satisfy the second requirement.
In the present case, the Respondent did not come forward with any relevant evidence of rights or legitimate interests in the Domain Name. The Panel found that the Respondent operated its business under the name “Bennett Group” which was different from the Domain Name, and had not published its own website associated with the Domain Name. Rather, the Panel commented that the Domain Name had been used since December 2021, after some years of inactivity, only to redirect Internet users to websites of the Complainant’s direct competitors. In the Panel’s view, the way that the Respondent had used the Domain Name was not in connection with a bona fide offering of goods and services, but instead reflected bad faith.
In light of the Complainant’s trade mark rights, the lack of permissive use as well as the Respondent’s use of the Domain Name only to redirect to competitors’ websites, the Panel considered that the Respondent had not rebutted the prima facie case established by the Complainant and so the Complainant had succeeded in establishing that the Respondent had no rights and legitimate interests in the Domain Name.
In relation to the third requirement, as noted above, under the .IO Policy a complainant is required to demonstrate either that the domain name in question was registered or that it was used in bad faith.
In the case at hand, the Complainant argued that the Respondent registered the Domain Name in bad faith, having constructive notice of its United States trade mark rights and renewing the Domain Name each year. However, the Panel noted that these arguments were problematic, citing the WIPO Overview 3.0, and pointed out that the lack of certainty as to when the Respondent actually acquired the Domain Name was an issue. Nevertheless, noting that it was sufficient under the .IO Policy to demonstrate bad faith use, the Panel went on to rule in favour of the Complainant.
Considering that the Respondent contracted with the Complainant to help the Complainant acquire several domain names in May 2018, and then specifically acted as the Complainant’s representative in negotiating the purchase of the Domain Name later that year, the Panel found that there were two possible scenarios.
On the one hand, if the Respondent already owned the Domain Name or acquired the Domain Name itself during this engagement, without informing the Complainant and while acting as the Complainant’s broker and pretending that it was negotiating with a third party, then in the Panel’s opinion, this deceptive practice must be considered bad faith under the Policy.
On the other hand, if the Respondent did not already own the Domain Name in 2018, it undeniably became aware of the Complainant and its trade marks at that time, given the Respondent’s publication of the Complainant’s name and logo on the “Clients” page of the Respondent’s website, as well as the Complainant’s interest in the Domain Name. The Respondent had then redirected the Domain Name to competitors’ websites. The Panel found that this was consistent with the Respondent’s acquisition of the Domain Name after 2018 with the purpose of selling it to the Complainant or a competitor for an amount in excess of out-of-pocket costs, in accordance with UDRP paragraph 4(b)(i).
In either case, the Panel found that it was indisputable that the Respondent had redirected the Domain Name to competitors’ websites since at least December 2021, and whether or not the Respondent was paid for this was immaterial. In the Panel’s view this conduct was also consistent with paragraph 4(b)(iv) of the UDRP, because internet users were misdirected to other websites for commercial gain, using a Domain Name that was identical to the Complainant’s trademark.
In conclusion the Panel found that this was undoubtedly bad faith use, and it was therefore unnecessary to consider the alternative theories proposed by the Complainant. The Domain Name was therefore transferred.
This case shows that, as the bad faith requirements of the .IO Policy are more relaxed than the requirements of the UDRP (bad faith registration or bad faith use, as opposed to both bad faith registration and use), the timing of the registration of a .IO domain name can be less important if the domain name has been clearly used in bad faith.
The decision is available here.