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Domain name industry news
TMCH decommissions TREx service
The Trademark Clearinghouse (TMCH) announced a few weeks ago that it was suspending its brand protection service called TREx (Trademark Registry Exchange) due to the current low interest in such a service.
TREx is a service developed by the TMCH enabling trade mark holders to restrict the registration of their brands as domain names across 40 Top Level Domains (TLDs). It is worth noting that the service will not be interrupted immediately, as all the brands, or “labels”, which are currently covered by it will continue to be protected until their respective expiration dates.
Subscribers to the service have their labels protected in two different ways depending on the TLDs, namely via “Registration Track” (for example .DE, .LA, .LONDON, .VIP or .WORK) and via “List Track” (for example .CAT, .COLOGNE, .JOBURG, .QUEBEC or .SCOT).
Labels that are protected via Registration Track were registered as domain names. Therefore, once the TREx service expires for these labels, the corresponding domain names will enter a Grace Period before being deleted.
Labels that are protected via List Track were not registered as domain names, rather the domain names were blocked for registration. Thus once the TREx service expires for these labels, the corresponding domain names will be available for registration immediately, and by anyone. Subscribers to the TREx service will not have priority to register these domain names.
However, the TMCH has put into place an “override process” in order to enable TREx subscribers to secure their domain names. The override process needs to be actioned prior to the expiry of the TREx service and works as follows:
- For Registration Track protected labels: the TREx subscriber liaises with the TMCH in order to obtain the auth codes for the domain names they wish to maintain, then they arrange the transfer of the domain names to a registrar.
- For List Track protected labels: the TREx subscriber liaises with a registrar and provides them with the list of domain names to secure along with the relevant SMD files for the various labels. The registrar then liaises with the relevant Registries which will release the domain names to them after checking the SMD files.
The TMCH stated that they would “potentially revive the TREx service” when the second round of new gTLDs starts, as they “do believe that a blocking product could be effective when there is more movement within the domain name industry”. They also said that they are “currently looking at a broader, more effective and efficient portfolio of brand protection services which will include more functionalities.” We will of course keep our Anchovy News readers informed of any developments.
For more information, please contact David Taylor or Jane Seager.
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WIPO temporarily suspends Ukrainian UA-DRP
Hostmaster, the Ukrainian domain name Registry, recently announced that the World Intellectual Property Organization (WIPO) had temporarily suspended its domain name dispute resolution services under the .UA Domain-Name Dispute-Resolution Policy (UA-DRP) and that it would not accept any new .UA domain name registration requests until further notice.
WIPO announced the decision by adding a note to its web page that details the UA-DRP procedure stating that: “In consultation with the .UA Registry, the Center has determined that it is not in a position to accept new .UA filings under the .UA Policy until further notice.”
In its announcement made on 27 April 2022, Hostmaster stated that “the decision is due to the fact that Ukrainian registrars and registrars may now be deprived of the opportunity to fully participate in arbitration proceedings.” It added that the out-of-court dispute resolution procedure will be resumed after the end of martial law in Ukraine.
WIPO has been handling .UA disputes since 2019 and about 60 cases have been decided so far.
This move follows the recent announcement by Hostmaster that it was pausing domain name deletions as a result of the ongoing conflict in Ukraine. As reported in Anchovy News last month, the redemption period, which usually lasts for a period of 30 days following the expiry of a .UA domain name, will now run until the end of the current period of martial law.
For more information about this, please contact David Taylor or Jane Seager
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International popularity of .DE domain names reaches all-time high
DENIC, the Registry responsible for running Germany’s .DE country code Top Level Domain (ccTLD), has recently published .DE domain name statistics, which demonstrate the international popularity of the .DE domain name space.
According to DENIC, at the end of 2021 there were a total of 17,160,504 .DE domain names held in DENIC’s database, of which nearly 1.7 million had registrants located outside of Germany. This figure represents an increase of 244,000 domain names, or almost 50%, as DENIC recorded 128,000 international registrations in 2020. The 1.7 million international .DE registrations also represent 9.88% of all .DE registrations, compared to 8.7% in 2020.
A breakdown of the international .DE registrations shows that the United States had the largest share with 21% of the foreign .DE stock. This is almost half of the total share of the six countries of Netherlands, Austria, Switzerland, Great Britain, Portugal and France, which represents 38.7%. This latter figure increased by 3.6% compared to 2020, whilst the share of non-European countries was relatively unchanged and accounted for 16%.
Even with the significant increase in internationally registered .DE domain names, more than 90% of .DE domain names are registered domestically in Germany, which represents almost 15.5 million domain names. According to DENIC, this figure accounts for 60% of all domain names registered in Germany and thus .DE clearly remains “the market leader in the national domain market”.
Nonetheless, the number of international registrants does demonstrate the popularity of the .DE domain name space, with the share continually increasing over the years and spreading out across the world.
To visit DENIC, please click here.
For more information on the registration of .DE domain names, please contact David Taylor or Jane Seager.
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Domain name recuperation news
Complainant loses Bette
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of the Domain Name at issue as it was registered before the Complainant was able to prove that it had trade mark rights, and the Respondent's explanation that it was registered because it was a common female name was "plausible".
The Complainant was Bette GmbH & Co. KG, a German company founded in 1952 and specialised in manufacturing and selling bathroom furnishings and products. It held several trade marks for BETTE, including an International trade mark (designating United Kingdom) registered in 2003. It also owned a domain name my-bette.com, which was registered in 2019 and pointed to its official website available in seven languages.
The Domain Name was bette.com, registered in 1998 through a privacy registration service. It previously pointed to a parking page with pay-per-click (“PPC”) links to third parties offering bath-related products, including the Complainant’s competitors. The parking page also contained a link to the Sedo domain name auction site, stating that the Domain Name “may be for sale” for “35000 GBP”.
The Respondent, Anthony Stewart, was based in the United Kingdom. He stated that he was the original registrant and that, in 2015, he was approached by the Complainant and declined its offer to purchase the Domain Name for EUR 1,000.
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 identical to its BETTE trade marks, irrespective of the fact that its trade marks were registered after the Domain Name was created. This assertion was accepted by the Panel. The first limb was therefore satisfied.
Regarding the second limb, the Complainant argued that the Respondent had no permission to make use of its trade marks while the Respondent claimed that he registered the Domain Name to establish a female facing online betting site, without any intent to target the Complainant and its business. The Respondent added that the name Bette was a common derivative of the name Elisabeth and stated that, as first name domain names were highly sought after, he had refused numerous offers from potential buyers over the years.
The Panel considered that the Respondent, despite his holding of the Domain Name for 24 years, had failed to provide any evidence of demonstrable preparations to use it in connection with his stated project. Furthermore, the Respondent’s use of the Domain Name to point to a parking page with PPC links and offer to sell the Domain Name could not be regarded as a bona fide offering of good and services under the UDRP. For these reasons, the Panel found that the Respondent had not established rights or legitimate interests in the Domain Name and so the second limb was also satisfied.
As far as the third limb was concerned, the Complainant argued that the Respondent’s use of the Domain Name to point to a parking page with PPC links redirecting to competitor websites and his offer to sell the Domain Name for an amount largely exceeding out-of-pocket costs clearly indicated bad faith. The Respondent denied having control over the content of the parking page to which the Domain Name resolved, claiming that both the PPC links and offer to sell the Domain Name were automatically generated. He further argued that he registered the Domain Name in good faith as it was created 5 years before the Complainant registered its earliest trade mark for BETTE and 21 years before the Complainant registered its domain name my-bette.com.
Given the early registration date of the Domain Name, the Complainant filed a supplemental filing with additional evidence to establish its common law trade mark rights at the time of registration of the Domain Name, including an earlier German design trade mark (subsequently abandoned) and its historical sales volumes in the period 1996-98.
With regard to the Complainant’s supplemental filing, the Panel considered that this filing did not address any newly discovered evidence and the Complainant should have anticipated that it would be required to establish its common law trade mark rights for the purposes of the third limb when filing the Complaint. In spite of this, the Panel still decided to take into account the additional evidence for the limited purposes of addressing the Respondent’s bad faith at the time of registration of the Domain Name. In the Panel’s opinion, the additional evidence provided by the Complainant was not sufficient to support its common law trade mark rights in light of the criteria specified in WIPO Overview 3.0, section 1.3, which provides:
“To establish unregistered or common law trademark rights for purposes of the UDRP, the complainant must show that its mark has become a distinctive identifier which consumers associate with the complainant’s goods and/or services.
Relevant evidence demonstrating such acquired distinctiveness (also referred to as secondary meaning) includes a range of factors such as (i) the duration and nature of use of the mark, (ii) the amount of sales under the mark, (iii) the nature and extent of advertising using the mark, (iv) the degree of actual public (e.g., consumer, industry, media) recognition, and (v) consumer surveys.”
Despite the Complainant’s long history (founded in 1952) and its continued use of the name Bette, the Panel considered that the Complainant had failed to substantiate its common law trade mark rights in 1998, even with the unsupported statements of sales in the period 1996-98 submitted in its supplemental filing.
In any event, the Panel found that the Respondent’s reason for registering the Domain Name based on a common female name was plausible, and there was no compelling reason to conclude that he had prior knowledge of the Complainant or intended to target it when registering the Domain Name in 1998. The fact that the Respondent never contacted the Complainant to sell the Domain Name and held it for years without listing it for sale further indicated the lack of bad faith.
In view of the above, the third limb was not satisfied and the Complaint was denied.
This case illustrates, once again, that to be successful under the UDRP complainants must prove both bad faith registration AND use. In cases such as this, where the Complainant's registered trade marks post-date registration of the Domain Name, it is generally difficult to prove bad faith registration and obtain a transfer order. In such cases, complainants have an uphill battle to establish not only the existence of unregistered trade mark rights at the time of the registration of the domain name, but also that the respondent was aware of these rights and was targeting them.
The decision is available here.
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Complainant loses to a "gripe site"
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 a Complaint for the Domain Name doesryankavanaughlooklikeharveyweinstein.com, finding that the Respondent’s use for a non-commercial criticism site was protected under the UDRP.
The Complainant was a United States film financier and film and television producer whose name appeared in the Internet Movie Database in connection with a number of films and TV series for which he was a producer. The Complainant's domain name rkavanaugh.com resolved to his personal website. On 15 November 2021, the Complainant filed a United States trade application for RYAN KAVANAUGH under Serial No. 97125566, with an alleged first use in commerce date of 18 May 2004.
The Respondent was a Swedish entity and agent for Ted Entertainment, Inc. ("TEI"), based in the United States. TEI produced the H3 Podcast, which had criticised the Complainant.
The disputed Domain Name was registered on 16 October 2021, and resolved to a website that featured pejorative, critical statements about the Complainant and compared him to Harvey Weinstein. The website at the disputed Domain Name included banners asking "Does Ryan Kavanaugh Look Like Harvey Weinstein?", statements detailing aspects of the Complainant’s personal and professional history, including his personal and professional association with Harvey Weinstein, and statements on and links to news articles detailing his purported arrest for drunk driving, his purported involvement in a Ponzi scheme, and other incidents purportedly involving him. The website also included a link to a YouTube video, which was an episode of the H3 Podcast featuring criticism of the Complainant, and discussion of news articles featuring him.
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 Complainant contended that the Domain Name was confusingly similar to his RYAN KAVANAUGH trade mark, in that it reproduced the trade mark in its entirety along with numerous negative terms. The Respondent argued that the Domain Name posed a question for discussion and commentary, namely "Does Ryan Kavanaugh Look Like Harvey Weinstein?" and that the added words created a different impression from the Complainant’s trade mark, and were unlikely to create confusion with the trade mark.
In this regard, two Panel members found that the additional elements ("does" before and "look", "like", and "Harvey Weinstein" after) resulted in a very different overall impression that was not confusingly similar to the Complainant’s trade mark, while the third Panel member was of the opinion that the addition of these other terms would not negate a finding of confusing similarity because the Complainant’s trade mark was recognisable within the Domain Name. However, given the Panel’s unanimous finding under the second and third limbs, this difference of opinion amongst the Panel members with regard to the first limb did not affect the outcome.
With regard to the second limb, the Panel noted that the disputed Domain Name actually posed an implied question, namely "Does [the Complainant] resemble [a former film producer convicted of sex crimes]?", and that Internet users viewing the corresponding website would not be misled as to its source or sponsorship. The Panel found that the website was by all appearances a genuine "gripe site" rife with non-commercial criticism of the Complainant in various forms, including photographic composites of the Complainant and Harvey Weinstein, accompanied by statements that they were visually similar individuals, which implied that, in the Respondent’s view, the Complainant was as objectionable as Harvey Weinstein. Regarding the Complainant’s allegation that the Respondent competed with him based on the link to the YouTube video of the H3 Podcast on the Respondent’s website, the Panel held that the YouTube video link evinced only a minimal, incidental degree of commercial activity, and that the Respondent’s website was mainly dedicated to non-commercial criticism. The Panel further rejected the Complainant's claim that similarities between the Respondent's website and the Complainant's website conveyed an association with his trade mark, finding that the similarities cited by the Complainant were superficial, and could feasibly be shared by many websites criticising or commenting on the Complainant. The Panel concluded that the Complainant had therefore failed to satisfy the requirements of the second limb.
Regarding the third limb, the Panel dismissed the Complainant’s assertion that the Respondent’s website was one of several competitor websites being used to describe the Complainant’s services, finding that the Respondent and the Complainant were not competitors and that the Respondent’s website was being used for non-commercial, legitimate criticism of the Complainant. The Panel was unconvinced by the Complainant’s argument that redirecting traffic to websites that provided "lies for the purpose of commercial gain" violated the UDRP, in that the Complainant had failed to prove that Internet traffic flowing to the Respondent’s website had resulted from bad faith on the Respondent’s part. The Panel concluded that it was beyond its ability and the scope of the UDRP to assess whether the Respondent’s website was defamatory, noting that the Complainant had not identified which statements made by the Respondent on the website were "lies". The Panel therefore found that the Respondent’s registration and use of the Domain Name was not in bad faith.
Despite their different opinions regarding the first limb, ultimately the Panel unanimously held that the Respondent was using the Domain Name for genuine non-commercial free speech, and not as a pretext for cybersquatting or commercial activity to misleadingly divert the Complainant’s customers. The Complaint was therefore dismissed.
The decision is available here.
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Unsubstantiated chain of events for cycling company
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a three-member Panel refused to transfer the disputed domain name protanium.com, finding that the Complainant had failed to prove that the Domain Name had been registered in bad faith.
The Complainant was Protanium B.V., a Dutch company incorporated in 2008 and wholly owned by Accell Global B.V., a European leader in e-bikes, bicycle parts and accessories. The Complainant was the owner of several trade mark registrations for PROTANIUM, including in Denmark (figurative mark registered in 1995), the European Union (word mark registered in 2008) and the United Kingdom (word mark registered in 2008).
The Respondent was Lars Munskoe, located in Denmark. He was one of the shareholders (holding 20% of the shares) and a member of the board of the Complainant from 2008 to October 2015, when he left the company after executing a settlement agreement with the Complainant. The Respondent registered the Domain Name in 2006. It resolved to a website providing information about PROTANIUM products and history, with the last updates dating back to 2014.
The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name. To be successful under the UDRP, a complainant must satisfy the requirements of paragraph 4(a) of the UDRP, namely that:
(i) the disputed domain name is identical or confusingly similar to a 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 and is being used in bad faith.
Under the first element of paragraph 4(a) of the UDRP, the Complainant argued that the Domain Name was identical to its trade mark PROTANIUM as it reproduced the trade mark in its entirety. The Panel considered, after establishing that the trade marks were still registered at the time of the drafting of the decision, that the Complainant had proven that the Domain Name was identical to the trade mark, as PROTANIUM was entirely reproduced in the Domain Name.
With regard to the second element of paragraph 4(a) of the UDRP, the Complainant claimed that the Respondent had no rights in the Domain Name, arguing that:
(i) the trade mark PROTANIUM was registered in 1995 whereas the Respondent registered the Domain Name in 2011,
(ii) the Respondent had full knowledge of the Complainant's intellectual property portfolio, including patent rights registered by the Complainant but invented by the Respondent when he was a board member and shareholder of the Complainant;
(iii) pursuant to the 2015 settlement agreement between the Complainant and the Respondent, all rights and obligations between the parties had ended and the Respondent no longer owned shares in the Complainant and was not licensed by it to use its intellectual property rights in any way;
(iv) the Respondent was not commonly known by the Domain Name and did not make fair use of it because, by registering the Domain Name and pointing it to a website providing information on the Complainant's history, philosophy, products and services, the Respondent had attempted to falsely suggest an affiliation with the Complainant; and
(v) the website to which the Doman Name resolved also provided information on other brands owned by the Accell Group and in which the Respondent had no rights.
The Respondent countered that he had always been the legitimate owner of the Domain Name since 2006 and that he had temporarily, between 2008 and 2015, granted the Complainant use of the Domain Name when he was a manager and shareholder of the Complainant. The Respondent also argued that the Domain Name had always been maintained and paid for by him and not by the Complainant, that it had been more than 6 years since he stopped working for the Complainant and that the Complainant owned its own official domain name protanium.nl registered in 2016, but never used. The Respondent rejected the Complainant's claim to exclusive rights in PROTANIUM based on trade mark registrations in a few countries and pointed out that many other people or companies in other countries had registered PROTANIUM as a trade mark. The Respondent further indicated that, to his knowledge, the Complainant had stopped selling PROTANIUM-branded products shortly after he left the company and that therefore the trade marks were not in use. In addition, the Respondent informed the Panel that due to the non-use of the trade mark by the Complainant, the Respondent had filed, in January 2022, a European Union trade mark application for PROTANIUM, in the name of his company Lynx ApS, as well as revocation applications against the Complainant's European Union and Danish trade mark registrations for PROTANIUM.
The Panel did not judge it necessary to address the question of the Respondent’s rights and legitimate interests because it concluded that the Complaint had failed on the third element.
Under the third element of paragraph 4(a) of the UDRP, the Complainant contended that the Respondent had registered and used the Domain Name in bad faith and that he was actively preventing it from reflecting its trade mark in the Domain Name.
With regard to bad faith registration, the Complainant argued that the Respondent, in his capacity as former board member and shareholder of the Complainant, had registered the Domain Name without the Complainant's consent, but with full knowledge of its intellectual property rights, as highlighted by the content of the website which included information on the Complainant's history, philosophy, products and services as well as patent rights owned by the Complainant rather than the Respondent himself. The Complainant considered that the Respondent could not have ignored the Complainant's trade mark rights given his former position as shareholder and board member and the prior relationship between the parties. The Complainant also pointed out that the Respondent's former position could not justify the use of the trade mark PROTANIUM without the Complainant's consent.
With regard to bad faith use, the Complainant claimed that, in violation of the settlement agreement which requested disclosure by the Respondent of the necessary information regarding the affairs of the company, including on intellectual property matters, the Respondent had never notified the Complainant of the ownership of the Domain Name, and had not handed over any relevant data on the topic. The Complainant added that the Respondent had been using a privacy shield to cover his identity, excluding himself from the need to comply with the abovementioned obligation.
The Respondent denied the allegation of bad faith registration and use and pointed out that (i) the Complainant was incorporated in 2008, two years after he registered the Domain Name and, therefore he had not registered the Domain Name with the Complainant in mind, (ii) to the best of his knowledge, the Complainant had ceased to be in business for many years and the inactive company was sold in 2019 to focus on a different brand name and no longer on PROTANIUM branded goods, and (iii) considering the Complainant was no longer an active business and had not been for many years, it was highly unlikely that the Complainant would need the Domain Name to conduct business, indeed it was more likely that the Complainant's intention was to sell the Domain Name for profit to the owner of its remaining activities, i.e. the beneficial owner Protanium GmbH, based in Switzerland.
The Panel held that the Complainant had failed to prove that the Respondent had registered the Domain Name in bad faith. First, in the absence of substantiating evidence, the Panel rejected the Complainant's assertion that the Domain Name had been registered by the Respondent in 2011, and relied on records indicating that the Domain Name was registered in 2006, i.e. two years before the Complainant's incorporation. Then, with regard to the Danish trade mark registered in 1995, the Panel pointed out that public records indicated that the trade mark was acquired by the Complainant in 2008 by means of a transfer from a predecessor in rights. The Panel also noted, as indicated by the Respondent, that the Domain Name resolved to a website providing information on the Complainant, its products, patent rights and history, including the foundation of Protanium in 2006 by the Respondent and another individual and that such website was updated until 2014, the Respondent having left the Complainant in 2015. Therefore, in view of the circumstances of the case, the Panel found that, on balance of probabilities, the Respondent had maintained and used the Domain Name for the purpose of promoting the PROTANIUM trade mark and products during his time as member and shareholder of the Complainant.
The Panel concluded that, given the registration date of the Domain Name and the nature of the dispute between the Parties, there was no clear case of cybersquatting under the UDRP, but instead a complex dispute that should be more properly addressed in a civil court. The Complaint was therefore denied.
This decision shows the importance and the relevance of the trade mark and domain registration dates when it comes to assessing bad faith registration claims under the UDRP. It is also a reminder that UDRP Panels will generally deny cases that go beyond the scope of cybersquatting where there are more complicated issues to consider, and this is especially true when parties are involved in parallel trade mark disputes (revocation proceedings in this particular case).
The decision is available here.
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Authored by the Anchovy News team.
Anchovy News editorial team:
- Laëtitia Arrault
- Gabrielle Creppy
- Sean Kelly
- Hortense Le Dosseur
- Ying Lou
- Cindy Mikul
- Thomas Raudkivi
- Maria Rozylo
- Jane Seager
- Aissatou Sylla
- David Taylor
- Tony Vitali
Anchovy® - Global Domain Name and Internet Governance
Hogan Lovells offers a unique, comprehensive and centralized Paris-based online brand protection service called Anchovy® for global domain name strategy, portfolio management and global enforcement.
We are accredited registrars with many country-specific Registries worldwide and the only law firm to be an accredited ICANN registrar.
We also specialise in all aspects of the ICANN new generic Top Level Domain (gTLD) process and we are an agent for the Trademark Clearinghouse. As the global Domain Name System undergoes an unprecedented expansion, brand owners must revise their online protection strategies and we are ideally placed to guide them. We are also frequently brought in to advise on cybersecurity issues arising across the globe.