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

Domain name industry news: Re-launch of .POST / Update concerning .UK domain names suspended for criminal activity / UA Day.

Domain name recuperation news: Updated WHOIS record misleads the complainant / Complexity in assessing bad faith registration / Panel gives Respondent the benefit of the doubt in UDRP case.

Newsletter sections:

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

Domain name industry news

Re-launch of .POST

The sponsored Top-Level Domain (sTLD) .POST, which is the designated TLD for organisations involved in the secure and trusted delivery of physical goods and services, is currently being re-launched with a view to making it more accessible to Internet users. 

As regular Anchovy News readers will know, sTLDs are a special category of Top-Level Domains which are supported by a community or organisation for specific purposes.  Another example is .AERO, which is sponsored by the Société Internationale de Télécommunications Aéronautique (SITA).

As for .POST, it is sponsored by the Universal Postal Union (UPU) – a United Nations specialised agency and the postal sector's primary forum for international cooperation.  According to Lati Matata, Director of the UPU's Postal Technology Centre, .POST “is the only Top-Level Domain sponsored by a UN body" and it “can be seen as the hallmark of trust in global supply chains, setting the standard for secure and reliable cross-border commerce and shipping."

First launched in 2012, .POST was, until now, highly restricted and intended exclusively for the postal sector.  According to an announcement published by EnCirca, which has been selected as the first ICANN registrar to manage the transition of .POST, all registrants had to be “verified and adhere to strict security protocols to help identify trusted actors in global supply chains.”

The sTLD is now being relaunched in order to reach a broader audience as the previous restrictions have been lifted (although not in totality), while eligibility has been extended to entities of the private sector (which will need to prove their business identity and undergo a verification process). Individuals are, however, still not allowed to register .POST domain names.  In addition, the Registry requires all .POST domain names to resolve to an active website and parking pages displaying third-party advertising are not allowed.

The re-launch schedule first started with a Pioneer Period which ran to 15 March 2024 and which was opened to organisations in certain categories (such as postal operators, private logistics and supply-chain service providers, etc) that were willing to commit to activating their .POST domain names by 25 April 2024.  The next launch phases are as follows:

  • Sunrise Period: from 15 March to 15 April 2024

During this period, trade mark holders are able to apply for the corresponding domain names under .POST.  As this is a re-launch, it will not be necessary for applicants to have registered their trade marks with the Trade Mark ClearingHouse (TMCH). 

  • General Availability: from 1 May 2024 onwards

As from this date, any legal entity will be able to register available .POST domain names on a first come, first served basis.

It is worth noting that submitted applications are published by the Registry for a minimum period of 30 days, during which objections or competing applications can be submitted.  More information can be found on the Registry’s website here.

For further information on the re-launch of .POST, please contact David Taylor or Jane Seager

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Update concerning .UK domain names suspended for criminal activity

Nominet, the Registry responsible for running the .UK country code Top Level Domain (ccTLD), has recently published an annual update entitled Tackling Online Criminal Activity on the subject of .UK domain names suspended for criminal activity.  The update covers the 12 months up to 31 October 2023.

According to Nominet, as soon as it is alerted by law enforcement agencies, it works with its accredited registrars to suspend .UK domain names suspected of criminal activity, in line with its policies.  Nominet’s annual update highlights that, for years running, .UK domain names that were suspended for criminal activity were at their lowest level since Nominet began tracking these types of suspensions.

In 2023, 1,193 .UK domain names were suspended by Nominet, pursuant to its combined efforts with law enforcement agencies.  This was a decrease from the 2,106 domain names that were suspended for criminal activity in 2022.  Nominet suggests that this “downward trend” could be due to criminals choosing other Top Level Domain extensions because they are aware that Nominet is hostile to illegal activities.

Nominet also notes that the number of .UK domain names being suspended at the point of registration is increasing.  This is primarily a result of Nominet’s “proprietary machine learning” ‘Domain Watch’ tool, which aims to identify potentially malicious domain names upon registration.  Once identified, these are placed on hold while Nominet’s compliance team establishes, working with the registrant and registrar, whether the domain name has been registered for a legitimate purpose.  In 2023, 5,911 .UK domain names were suspended as a result of Nominet’s Domain Watch, which was an increase on the 5,005 domain names suspended in 2022.  According to Nominet, the Domain Watch tool is also catching more malicious domain names as updates are made to it.

In 2023, Nominet also expanded its efforts to tackle abuse under .UK by including existing domain name registrations that appear on ‘threat feeds’.  Nominet, using third party data, investigated 3,116 .UK domain names that had been flagged as potential phishing, malware, fake web-shops, command and control or cryptocurrency scams.  As a consequence, another 2,230 domain names were suspended.

With regard to the reporting agencies, the Police Intellectual Property Crime Unit (PIPCU) had the highest number of domain names suspended (717), followed by the National Fraud Intelligence Bureau (NFIB) and the Financial Conduct Authority (FCA), with 321 and 116 domain names suspended, respectively.

Nominet recorded 1,058 potential breaches of its policy that prohibits the registration of domain names that “promote or incite serious sexual offences” (where there is no reasonable or legitimate use for the domain name).  However, none of these domain names were suspended.

Eleanor Bradley, Managing Director of Registry and Social Impact, Nominet, has been quoted as saying:

Our approach to tackling criminality in the .UK namespace continues to get results. It’s positive to see criminal activity, as reported by law enforcement, is down, while Domain Watch remains a valuable tool because it prevents domains with malicious intent entering the .UK namespace in the first place.  We’re extremely proud of the hard work of our people and our partners in keeping the .UK domain as safe and secure as it can be.”. 

For more information, please contact David Taylor or Jane Seager.

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UA Day

The second Universal Acceptance Day was held in Belgrade, Serbia, on 28 March 2024.  This event organised by the Internet Corporation for Assigned Names and Numbers (ICANN) in collaboration with the Universal Acceptance Steering Group (UASG), serves as a global awareness event to promote Universal Acceptance and encourage its adoption among key stakeholders.

Universal Acceptance (UA) is a technical requirement which ensures that all valid domain names and email addresses, regardless of script, language, or character length, can be used by all Internet-enabled applications, devices and systems, for example:

• ASCII domain name: anchovy.com

• Internationalised Domain Name (IDN): 测试域名.com

• Internationalised email address: ਈਮੇਲ-ਪਰਖ@ਡੋਮੇਨਨਾਮ.ਭਾਰਤ

In other words, it aims to create an inclusive Internet that supports a wide range of languages and scripts.

The UA Day event, which is held annually and organised by the community-led Universal Acceptance Steering Group and ICANN, was established as a means to rally local, regional, and global stakeholders to spread awareness and encourage UA adoption through a mix of virtual, in-person, and hybrid informational and training sessions.

The inaugural UA Day was held on 28 March 2023 and marked the first time a diverse set of technical and language communities, companies, governments, and Domain Name System (DNS) industry stakeholders had come together to build up UA and a multilingual Internet on a global scale.

Should you require further information on IDNs, please contact David Taylor or Jane Seager.

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Domain name recuperation news

Updated WHOIS record misleads the complainant

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (the UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a Panel refused to order the transfer of the domain name at issue because the Complainant had failed to demonstrate that the Respondent had registered and used it in bad faith.   

The Complainant was Ziip Inc, an American company selling app-connected electrical devices for esthetic facial treatments.   

The Respondent was an individual based in the United States of America.  The Respondent presented itself as a professional domainer in the business of acquiring and selling generic or descriptive domain names that either matched or misspelled common words and acronyms. 

The disputed domain name, ziip.com, was registered in 2000.  At the time of the Complaint, the disputed domain name resolved to a website featuring pay-per-click ("PPC") links for the following three terms: "app software", "open zip application" and "roller banner".  On the same web page, the disputed domain name was offered for sale for USD 68,000.

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 claimed that it had trade mark rights in the term "ZIIP" established in 2015.  The Respondent disputed the ownership of the ZIIP trade mark registration claimed by the Complainant, citing discrepancies between the registered owner listed as Ziip, LLC, based in Wyoming, and the Complainant, identified as Ziip, Inc., situated in California.  Additionally, the Respondent pointed out that publicly accessible records showed that Ziip, Inc., had been established in Delaware in 2020.  The Panel did not comment on the Respondent's allegations regarding the ownership of the Complainant's trade mark rights.  The Panel simply considered that the disputed domain name was identical to the Complainant’s ZIIP mark and noted that the entirety of the mark was reproduced in the disputed domain name.  Therefore, the Panel found that the first element of the Policy had been established. 

In light of its findings under the third limb of the Policy, the Panel did not comment on the second requirement of the UDRP. 

Turning to the third limb of the UDRP, the Complainant contended that it had invested USD 3,500,000 in the development and marketing of its ZIIP brand, which had gained widespread recognition.  In addition, the Complainant claimed that the disputed domain name was registered on 1 March 2023, which was after the Complainant had established its rights in the ZIIP mark.  According to the Complainant, the disputed domain name led to a website featuring PPC links loosely associated with the Complainant's industry, thus allowing the Respondent to profit from the Complainant's e-commerce brand investment. 

The Respondent rebutted these arguments by stating that it had registered the disputed domain because it corresponded to a misspelling of the common word "zip" and that it had never heard of the Complainant prior to receiving the Complaint.  Furthermore, the Respondent submitted that the disputed domain name was owned since 2003 by Netico, Inc., which it had managed since its incorporation.  The Respondent added that it listed the disputed domain name for sale for the first time in 2012.  

First, the Panel found that the Complainant, responsible for substantiating its claims in a UDRP proceeding, had not presented any evidence indicating a registrant transfer in 2023 (and thus a new registration for the purposes of the Policy).  On the other hand, the Panel considered that, despite the incompleteness of evidence provided by the Respondent, on balance of probabilities, the disputed domain name had at all time been controlled by the Respondent since 2000, albeit under different corporate identities.  The Panel also noted that the Respondent had demonstrated that it had offered the disputed domain name for sale in 2012 and 2013, predating the Complainant’s establishment of trade mark rights.  Moreover, the Panel added that there was no proof that the Respondent had targeted the Complainant or attempted to sell the disputed domain name to the Complainant.  Under these circumstances, the Panel found that the use of the disputed domain name for PPC links did not support a finding that the Respondent was attempting to capitalise on the value of the Complainant’s mark.  In light of the above, the Panel made a finding that the Complainant had failed to demonstrate the requirements prescribed by the third limb of the Policy and so the Panel refused the transfer of the disputed domain name. 

Comment

This decision highlights once again how having a trade mark by itself does not necessarily mean that a trade mark holder will succeed in obtaining the transfer of a domain name, even if it is identical to such trade mark.  This is particularly the case when a disputed domain name was registered before a Complainant's registration and use of a trade mark.  The decision also serves as a reminder that an updated Whois entry does not, by itself, prove that a change of ownership has taken place, since such an update may have been triggered by other changes.  It is therefore advisable for complainants to assess, to the extent possible, the ownership and history of a domain name prior to filing a complaint, and be prepared to change course if the Whois details revealed by a proxy service further to the filing reveal that chances of success are not what they seemed.  Domainers may also consider steering clear of using such proxy services to try and avoid having to defend unnecessary UDRP complaints filed against them.

The decision is available here.

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Complexity in assessing bad faith registration

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of a Domain Name, considering that there was no decisive evidence supporting the Respondent's targeting of the Complainant's brands when registering the Domain Name.

The Complainant was Al Rifai Roastery S.A.L, a nut retailer based in Lebanon which was founded by Hajj Moussa Al Rifai in 1948.  The Complainant owned several figurative trade marks in multiple jurisdictions, including the Lebanese mark for ALRIFAI registered in April 2003 and the EU mark for R RIFAI registered in 2022.  It registered the domain name alrifai.com in October 1997 and used it to point to its official website displaying ALRIFAI branding since 1998.  The Complainant's products currently displayed the R RIFAI mark on their packaging and were available in Europe through selected retailers.  The Complainant also held other domain names, such as rifai.com.lb registered in 2021. 

The Respondent was an individual based in Italy who operated a website at the domain name puglia.com providing information about the Italian province of Puglia, including recipes, events and accommodation.

The Domain Name was rifai.com, registered on 3 May 2003.  The registrar's records showed that the Respondent's late father initially registered the Domain Name and transferred it to the Respondent in June 2023.  From 2004, the Domain Name resolved to a parking page with pay-per-click (PPC) links and was offered for sale via different brokers.  On 15 June 2023, it was listed for sale for at least USD 100,000.  On the same day, the Complainant made an offer of USD 5,000, which was refused by the Respondent.  On 19 June 2023, the Respondent offered to sell it for USD 10,000 but the Complainant didn't accept this price.

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

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

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

(c)        The domain name has been registered and is being used in bad faith.

With respect to the first limb, the Complainant contended that the Domain Name was confusingly similar to its trade marks for ALRIFAI and R RIAFI as it incorporated the dominant element of these marks in its entirety.  The Panel accepted the Complainant’s contentions, finding that its ALRIFAI and R RIAFI marks were recognisable within the Domain Name though the term RIFAI.  The first limb was therefore satisfied.

Regarding the second limb, the Complainant argued that the Respondent did not have any rights or legitimate interests in the Domain Name, which was merely used to resolve to a parking page displaying PPC links.  The Respondent rebutted this by stating that the term "rifai" meant "do it again" in Italian and that she intended to use the Domain Name in connection with a recipe project related to her puglia.com website, precisely to teach people how to redo recipes.  Faced with this argument, the Complainant argued that the Respondent's interpretation of the term "rifai" was false as the linguistic origin of this term was Arabic and "al rifai" meant "honorable person".  The Complainant further asserted that the PPC links displayed on the parking page did not relate to any dictionary meaning and the Domain Name was listed for sale for 20 years.

The Panel agreed that the mere use of the Domain Name, which was confusingly similar to the Complainant's marks, to resolve to a parking page with PPC links and the Respondent's offer for sale could not amount to a bona fide offering of goods and services under the Policy.  Further, the Respondent's name had no resemblance to the Domain Name and nothing indicated that she was commonly known by the Domain Name.  The Complainant therefore successfully established a prima facie case showing the Respondent's lack of rights and legitimate interests under the second limb.  Regarding the Respondent's purported plan to use the Domain Name in connection with her website at the domain name puglia.com, the Panel noted that the Respondent's website published recipes on a page headed "Ricette" (“recipes” in English), but there was no evidence of any preparations to create another recipe website associated with the Domain Name.  In addition, "rifai" ("re-do" in Italian) only had a constrained connection to recipes.  In the Panel’s opinion, the fact that the Respondent had actively sought to sell the Domain Name to the Complainant undermined the Respondent's claim that it was intended for a recipe website.  For these reasons, the Respondent failed to rebut the Complainant's prima facie showing and the second limb was therefore satisfied.

As far as the third limb was concerned, the Complainant asserted that its ALRIFAI trade marks were well known throughout the world and so the Respondent must have been aware of their existence when registering the Domain Name.  Such registration was therefore in bad faith.  The Complainant further asserted that the Respondent's bad faith was evidenced by the general offer to sell the Domain Name for the minimum price of USD 100,000, a price tag clearly directed at a company the size of the Complainant.  Additionally, the Complainant provided evidence of prior Panel decisions issued against the Respondent or her late father in an attempt to establish a pattern of conduct.  In her defence, the Respondent contended that the Domain Name was registered in 2003 and had never been subject to any objection prior to this proceeding.  The fact that part of the Complainant's name was reflected in the Domain Name did not amount to registration in bad faith per se.  The Respondent underlined that the project to use the Domain Name was delayed due to the death of her father and asserted that she was trying to revitalise all the projects conceived by him.

In order to assess registration in bad faith, the Panel first analysed whether it should rely on the circumstances at the time when the Domain Name was initially registered by the Respondent's father in 2003.  Based on the Respondent's assertions that the Domain Name was effectively under the same control from 2003, backed up by the registrar's records, the Panel concluded that, despite the nominal change in registrant, there was an unbroken chain of possession of the Domain Name since 2003, and so the circumstances prevailing as at 3 May 2003 should be taken into account.

On this basis, the Panel noted that the Domain Name was registered prior to the registration of most of the Complainant's trade marks, such as the EU mark for R RIFAI registered in 2022.  The Panel noted that Panels will not normally find bad faith where a registrant registers a domain name before a complainant's trade mark rights accrue, unless there were exceptional circumstances suggesting that the registrant had acted in anticipation of the complainant's nascent trade mark rights.  Given that the Complainant's EU mark was registered 19 years after the Domain Name and the evidence of use of this mark was only recent, the Panel did not find that the R RIFAI mark was being targeted at the time of the registration of the Domain Name. 

The only prior trade mark owned by the Complainant was its mark for ALRIFAI, which was registered in April 2003 in Lebanon, whereas the Respondent was based in Italy.  The Panel admitted that the Respondent may have visited the Complainant's website or otherwise been aware of the Respondent prior to 2003, but noted that at that time the Complainant's website only displayed ALRIFAI branding, whilst the Domain Name incorporated "rifai" without the definite article "al".  These circumstances did not give the Panel the impression that the Domain Name had been registered to target the Complainant or its trade marks.  Regarding the prior panel decisions cited by the Complainant, the Panel pointed out that these facts were relevant but not determinative.  The Panel also underlined that the Respondent only sought to sell the Domain Name to the Complainant in 2023, but not earlier, which did not shed light on the Respondent’s state of awareness of the Complainant in 2003.

In view of the above, the Panel concluded that the Domain Name was not registered in bad faith and it was unnecessary to consider it was used in bad faith as well. The third limb was therefore not satisfied and the Complaint was denied.

Comment

This decision underscores the importance of evidencing, on balance, that a respondent was targeting a complainant and its rights at the time that a disputed domain name was registered.  If the parties are based in different jurisdictions and the domain name at issue was registered many years ago, this can be a difficult exercise.  Whilst prior decisions against a Respondent demonstrating previous bad faith can be very persuasive, they will not assist in obtaining a transfer order if the crucial proof of targeting upon registration is missing.

The decision is available here.

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Panel gives Respondent the benefit of the doubt in UDRP case

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 in relation to the disputed domain name katepal.com.  The Panel found that, although the first element of the UDRP was satisfied, the Complainant had not provided evidence demonstrating the Respondent's lack of rights or legitimate interests regarding the disputed domain name, nor had it provided evidence indicating bad faith registration and use of the domain name.

The Complainant was a company registered in Finland that provided roofing and other building materials.  The Respondent was Dzone Inc from the Republic of Korea.

The disputed domain name was registered on 14 December 2000. Over time, it resolved to several sites with varying content, including what appeared to be an adult entertainment website in 2002.  At various times between 2006 and 2012 it resolved to web pages featuring sponsored links or was inactive.  From 3 November 2012, the disputed domain name resolved to web pages indicating that it was for sale.  From 2021, the disputed domain name was offered for sale on Afternic for a "buy now" price of USD 29,000.

To be successful in a complaint under the UDRP, a complainant must satisfy each of the following requirements:

(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.

The Complainant argued that it was the proprietor of numerous trade mark registrations for its KATEPAL mark, including a Finnish combined trade mark comprising the text KATEPAL and a device that was registered on 14 November 1962 (expired on 14 November 2002), as well as an International trade mark for the word mark KATEPAL, registered on 4 September 2002, that designated 25 countries, including the Democratic People's Republic of Korea.  The Complainant also sought to rely on a Republic of Korea trade mark for KATEPAL, registered on 27 November 1997, which it submitted was registered by its importer in that country (expired on November 27, 2017).  The Complainant asserted that it had established all three of the elements required under the UDRP for a transfer of the disputed domain name. 

While acknowledging that the Complaint satisfied the technical requirement under the first element of the Policy based on the Complainant's registered trade marks, the Respondent argued that the Complainant had no pre-existing trade mark rights at the time of registration of the domain name in December 2000.  Furthermore, the Respondent asserted that it did have rights or legitimate interests in the disputed domain name, claiming that it had registered the domain name on behalf of an individual associated with the Korea Association of Teachers of English (KATE) for a networking site, hence the addition of the term "PAL", meaning "friend".  The Respondent claimed that when that individual was ultimately unable to proceed with the planned website at the disputed domain name owing to a lack of cooperation by the KATE association, the disputed domain name was left with the Respondent to enable it to recover the costs incurred. 

The Respondent also explained that it operated a domain registration and website development company in the Republic of Korea in 2000 and provided evidence of similar domain name registrations to support its position.  The Respondent denied knowledge of the redirection of the domain name to adult content and stated that it did not recall whether or how any affiliate links were subsequently provided.  The Respondent accepted that it offered the disputed domain name for sale from 2004 onwards, but although it received a number of offers, none were from the Complainant.   Additionally, the Respondent argued that speculation in domain names was lawful concerning domain names not registered in bad faith.  Furthermore, the Respondent stressed that the sale of the disputed domain name intrinsically created rights or legitimate interests since it formed part of its stock-in-trade. 

The Respondent also  sought to rely on the common law doctrine of laches to bar the Complainant from succeeding in a proceeding brought 23 years after the registration of the disputed domain name.  It submitted that the Complainant had filed the Complaint as a "Plan B" attempt to acquire the disputed domain name, having remained silent for 23 years before making an anonymous attempt to purchase it, and therefore asked the Panel to make a finding of reverse domain name hijacking.  Finally, the Respondent contended that this was not a case of cybersquatting, suitable for determination under the UDRP, but rather a dispute over competing rights. 

Under the first element, the Panel found that the Complainant had established that it was the owner of current trade mark registrations for the word mark KATEPAL.  Although the disputed domain name was registered prior to the registration of the Complainant's current trade marks, this was immaterial to the "standing" requirement under the first element.  The Panel found that the disputed domain name was identical to the Complainant's trade mark, thereby satisfying the first element.

The Panel addressed the second and third elements of the Policy together, as both elements shared similar factors that informed the Panel's conclusions under each such element.

The Panel considered two possible scenarios based on the evidence available.  In the first scenario, the Respondent registered the disputed domain name without knowledge of the Complainant, on behalf of an individual intending to create a networking site related to the KATE association.  However, when this project didn't materialise, the Respondent continued to hold the domain name and used it for affiliate links before offering it for sale.  Later, in response to an anonymous enquiry to purchase the disputed domain name, the Respondent quoted a price of USD 29,000, believing the purchaser to be an individual named "Kate Pal" or similar, wishing to use the disputed domain name for a personal website.

In the second scenario, the Respondent registered the domain name after becoming aware of the Complainant's business name or trade mark, hoping the Complainant would purchase it at some point in the future.

The Panel found that although the Respondent did not provide evidence to support its version of events, it accepted that it may be difficult to do so given that 23 years had elapsed since the registration of the disputed domain name.  The Panel also noted that while UDRP Panels do not generally recognise a doctrine of laches or acquiescence, it is generally accepted that where a complainant delays significantly in bringing a complaint, it may be more difficult for that complainant to establish the second and third elements under the Policy, as was the case here.

Notwithstanding the difficulties in providing evidence after a significant period of time, the Panel found that the Respondent's explanation for registering the disputed domain name (i.e., the first scenario) was improbable for a number of reasons, including the initial pointing to adult entertainment and the fact that the Respondent had been subject to a significant number of UDRP proceedings in which bad faith was found.  However, the Panel ultimately found that it could not definitively exclude the Respondent's version of events as a possibility.

In relation to the Complainant's case, the Panel emphasised that, despite two opportunities to establish its case (given that the Panel issued a Procedural Order requesting that the Complainant provide additional evidence relating to the reputation of its trade mark at the relevant time), the Complainant failed to do so.  More specifically, the Complainant failed to exhibit evidence of its business activities in the Republic of Korea at the time of the registration of the disputed domain name and failed to demonstrate why the Respondent was more likely than not to have been aware of its trade mark at the time that the disputed domain name was registered.  Therefore, the Panel found that the Complainant had failed to prove that the Respondent had no rights or legitimate interests in the domain name.  As the Panel noted, in circumstances where neither party has exhibited sufficient evidence to establish its case, the benefit of the doubt goes to the Respondent.

The Panel underlined that if a respondent is found to have had legitimate interests in a domain name at the time of registration, its subsequent use of the domain name is immaterial under the UDRP.  As a result, the USD 29,000 "Buy Now" price for the disputed domain name could not be considered a determinative factor.  Finally, the panel made no finding of reverse domain name hijacking as there was no evidence of bad faith on the part of the Complainant.

Comment

This case illustrates the importance for complainants of adducing evidence to show the reputation of a trade mark that is being relied on for the purposes of a UDRP Complaint, in particular at the time that the disputed domain name was registered.  Moreover, the decision demonstrates that waiting for an extended period before filing a complaint is likely to pose challenges for both parties, but in particular for the complainant, as was the case here.  In the face of inadequate evidence from both parties, the Panel gave the benefit of the doubt to the Respondent and refused to order a transfer of the disputed domain name. 

The decision is available here.

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Authored by the Anchovy News team.

 

Anchovy News editorial team:

  • Laëtitia Arrault
  • Lanlan Bian
  • Gabrielle Creppy
  • Sean Kelly         
  • Hortense Le Dosseur
  • Ying Lou
  • Cindy Mikul
  • Eliza Parr
  • Thomas Raudkivi
  • Maria Rozylo
  • Jane Seager
  • Aissatou Sylla   
  • David Taylor
  • Tony Vitali

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