[co-authors: Laëtitia Arrault, Sean Kelly, Cindy Mikul, Maria Rozylo, Tony Vitali]
Newsletter sections:
- Domain name industry news
- Domain name recuperation news
G.ee Wizz! – Estonia auctioning off single-character .EE domains
The Estonian Internet Foundation (EIF), the body that manages the .EE TLD, has recently started auctioning off single-character domains, as well as certain Estonian place names and other country names (toponymic domains) that have been kept in reserve for over a decade.
The EIF announced the opening of the auction of single-character .EE domain names and toponymic domains on 11 September 2023. The domain names are being released in weekly batches according to a published schedule until summer 2024. The Registry is using the open and transparent “English auction” model, meaning that all bids are visible to auction participants in real time.
The domain names in question were reserved and blocked by the EIF in 2011 in order to make them available for institutions with a legitimate interest and those currently being released are ones that have not found a taker over the past 12 years.
Among the toponymic domain names that have recently been released by the Registry are uruguay.ee, austria.ee, liechtenstein.ee and india.ee.
Of the single-character domain names being auctioned, the EIF has stated:
“It is truly a unique, timeless asset that not only enhances the online reputation but also holds the promise of long-term investment value. In addition to the several unique character combinations with the .ee domain, like 1.ee, s.ee or b.ee, it’s an opportunity to craft a remarkable digital brand.”
Domain hacks based on other ccTLD extensions such as .ET (Ethiopia), .LY (Libya) and .ES (Spain) have long been popular with registrants and domain name investors alike, with some going on to change hands for large amounts of money; for example b.et, which was sold for $100,000 in 2021 and j.et, which sold for $60,000 in 2022. So, although the list of three-letter English dictionary words ending in “ee” is vanishingly small, these, along with other foreign words and numeric single character domains, such as 1.ee, should net the Registry some valuable revenue.
With regard to the proceeds from the auction, the EIF has stated that these will:
“…be invested in the development of a more efficient .ee and making the Estonian internet safer. Therefore, the participants of the auction make their contribution to improving the internet in Estonia.”
Should you wish to bid on any of the domain names being released by the Estonian Registry, click here.
For more information or assistance with .EE domain name registrations, please contact David Taylor or Jane Seager.
Launch of three new gTLDs
The expansion of the domain name universe continues with the recent launch of three new generic Top Level Domains (gTLDs): .MEME, .ING and .MUSIC.
.MEME
Referring to Internet memes, which as most people know are cultural items in the form of an image, video, phrase, etc., that are spread online and especially through social media, the .MEME gTLD is advertised as “funny, relatable, and shareable”.
The launch schedule for .MEME is as follows:
- Sunrise Period: 20 September – 24 October 2023
During this period, trade mark holders who have registered their trade marks with the TradeMark Clearinghouse (TMCH) will be able to apply for the corresponding domain names under .MEME.
- Limited Registration Period: 31 October – 28 November 2023
During this period, .MEME domain names may only be registered to content creation platforms specialising in the creation and distribution of internet memes.
- Early Access Period (EAP): 28 November – 5 December 2023
During this period, available .MEME domain names may be registered by anyone on a first come, first served basis at a higher price, which will decrease day by day leading up to General Availability.
- General Availability: 5 December 2023 onwards
As from this date, anyone will be able to register available .MEME domain names on a first come, first served basis, at the standard price.
.ING
The .ING gTLD is advertised as an extension “that enables new homes on the internet in a single word (…). Whether it’s design.ing or writ.ing, ink.ing or row.ing, .ing is ready for action, whatever it is you’re do.ing.”.
The launch of .ING follows the same schedule as .MEME, except that there is no Limited Registration Period:
- Sunrise Period: 20 September – 24 October 2023
Trade mark holders who have registered their trade marks with the Trademark Clearinghouse (TMCH) will be able to apply for the corresponding domain names under .ING.
- Early Access Period (EAP): 31 October – 5 December 2023
Available .ING domain names may be registered by anyone on a first come, first served basis at a higher price, which will decrease day by day leading up to General Availability.
- General Availability: 5 December 2023 onwards
Anyone will be able to register available .ING domain names on a first come, first served basis, at the standard price.
Both new gTLDs are secure namespaces, meaning that HTTPS is required for all .MEME and .ING websites. Therefore an SSL certificate will need to be obtained by the registrants so that their domain names can resolve in browsers.
.MUSIC
Earlier this month, DotMusic Limited launched the long-awaited .MUSIC. The new gTLD is advertised as “the digital music passport to securely create, collaborate, curate, connect, share and sell everything music.”
.MUSIC will be a secure namespace enabling the music community to connect and have online visibility. Indeed applicants will be required to have a legal music nexus with the global music community as either a musician, band, or music industry professional in order to register their .MUSIC domain names.
The launch schedule is as follows:
- Sunrise Period: 11 September – 15 November 2023
Trade mark holders who have registered their trade marks with the Trademark Clearinghouse (TMCH) will be able to apply for the corresponding domain names under .MUSIC.
- Music Community Phase: 16 October – 9 March 2024
During this period, .MUSIC domain names will be available to major and independent record labels, music community organisations and their members.
- General Availability: 9 April 2024 onwards
As from this date, anyone with a music nexus will be able to register available .MUSIC domain names on a first come, first served basis.
Launch of the European Top-Level domain Information Sharing and Analysis Centre
Eleven European domain name Registries, with support from the Council of European Top-Level Domain Registries (CENTR), have recently launched the European Top-Level Domain Information Sharing and Analysis Centre (European TLD ISAC).
CENTR currently has 50 full members and eight associate members. The full members include Afnic (the French .FR Registry), DENIC (the German .DE Registry) and Red.es (the Spanish .ES Registry), among others. Its aim is to encourage collaboration among European domain name Registries and CENTR sees itself as “acting as the voice of European ccTLDs, and shaping the DNS ecosystem in a sustainable, safe and secure manner to maintain an open, reliable and inclusive internet infrastructure.”
With the launch of its website and platform, the European TLD ISAC, which is essentially a working group within CENTR, will aim to:
“…enhance the security posture of top-level domain registries in Europe through information sharing, collaboration, and the promotion of best practices. In an age where cyber threats evolve rapidly, cooperation among domain registry operators, security experts, and other stakeholders is vital to protect the digital infrastructure.“
The objectives set out on the European TLD ISAC website are as follows:
- Facilitate collaboration on threat intelligence and analysis of technical and non-technical security information.
- Serve as an expert point of contact regarding cybersecurity linked to the DNS ecosystem.
- Improve the internal capabilities of top-level domain registry operators to meet security and regulatory requirements by sharing expertise and knowledge.
- Enhance cross-sectoral sharing through collaborating with other ISACs and participating in international initiatives.
- Raise public cybersecurity awareness regarding the use of the domain name system and associated protocols through seminars and publications.
Additionally, the European TLD ISAC will make freely available various resources, including threat intelligence reports and best practice guidelines, and will hold events, workshops and seminars on cybersecurity-related issues.
The European TLD ISAC has stated that it is “driven by a vision of Europe where digital threats are met with resilience and collaboration, not fear and uncertainty” and that it believes that the launch of its new website and platform demonstrate its commitment to this cause.
For more information on European TLD ISAC or CENTR please go to https://www.tld-isac.eu and https://www.centr.org/.
Domain Name Industry brief (DNIB) for Quarter 2 – 2023
DNIB.com, a data, news and information website that is sponsored by Verisign, recently published its Domain Name Industry Brief for Quarter 2, 2023. According to the Brief there were 356.6 million domain name registrations across all Top Level Domains (TLDs) at the end of Quarter 2. This represented an increase of 1.7 million domain name registrations, or 0.5% over the first quarter for 2023. Domain name registrations also increased by 4.3 million, or 1.2%, year over year.
The two main generic Top Level Domains (gTLDs), .COM and .NET, had a combined total of 174.4 million domain name registrations at the end of Quarter 2 of 2023, which was a decrease of 0.3 million, or 0,2% over Quarter 1 for the same year. However, year over year results showed an increase of 0.1 million or 0,1%.
As of 30 June 2023, the number of .COM domain name registrations stood at 161.3 million, and .NET domain name registrations totalled 13.1 million. New .COM and .NET domain name registrations stood at 10.2 million at the end of Quarter 2 of 2023, compared to 10.1 million domain name registrations at the end of Quarter 2 of the previous year.
The top 10 largest TLDs by number of reported domain names as of 30 June 2023 are:
The total number of country-code Top Level Domain (ccTLD) registrations was 137 million at the end of the second quarter of 2023, which represented an increase of 1.1 million domain name registrations, or 0.8%, compared to the first quarter of the same year. ccTLDs increased by 2.7 million domain name registrations, or 2.0%, year over year.
To access the full Domain Name Industry Brief for Quarter 2, 2023, or any archived Briefs, please click here.
Legitimate use prevails in UDRP case
In a recent decision before the World Intellectual Property Organization (WIPO), a Panel examined the interplay between trade mark rights and legitimate use under the Uniform Domain Name Dispute Resolution Policy (UDRP). The Panel found that there was no evidence that the Respondent must have known of the Complainant when it registered and used the disputed domain name and ultimately declined to transfer it.
The Complainant was a French company founded in 1990 which offered hotel, restaurant, and related booking services and operated with a global presence of over 700 hotels and a workforce of 1,000. It was widely recognised in France and in Europe.
The Complainant owned French trade mark registrations for “BB-HOTEL” and “BBHOTEL”, both registered on 29 August 2002, and European and International trade mark registrations for “B&B HOTELS”, registered in December 2006 and November 2007 respectively.
The Complainant owned the domain names bbhotels.com, bbhotel.eu, bbhotels.fr, and bbhotels.net, registered between September 2004 and September 2020, which redirected to its official website.
In contrast, the Respondent, an El Salvador-based company, operated the “B Boutique Hotel”, a boutique hotel with four rooms near San Salvador. The Respondent owned trade mark registrations for “B BOUTIQUE HOTEL” in various jurisdictions, including Panama, Honduras, Guatemala, and El Salvador, registered between July 2013 and August 2015.
The Respondent registered the disputed domain name, bboutiquehotel.com, on 28 March 2022. It was inactive when the Complaint was filed, but at the time of the Panel’s decision it was redirecting to the Respondent’s hotel website.
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.
The Complainant argued that the disputed domain name was confusingly similar to its trade marks, with the addition of the descriptive term “boutique” being likely to be seen as a way of promoting a type of hotel and services. The Complainant also contended that the Respondent had no rights or legitimate interests in the disputed domain name and that the Respondent must have had the Complainant’s trade marks in mind when registering it. The Complainant argued that the Respondent’s non-use of the disputed domain name constituted typical cybersquatting behaviour and was likely to mislead consumers into believing that the disputed domain name was associated with the Complainant and its brand and services.
In response, the Respondent highlighted the legitimate use of its trade mark “B BOUTIQUE HOTEL” to operate a four-room boutique hotel in El Salvador.
Under the first requirement the Panel found for the Complainant, acknowledging the visual correlation between the Complainant’s trade marks and the disputed domain name. However, the Panel also acknowledged the addition of the distinctive “boutique” element, which was distinguishable within the disputed domain name and identical to the Respondent’s “B BOUTIQUE HOTEL” trade mark, a matter that the Panel returned to under its subsequent analysis.
In scrutinising the second element of the UDRP, the Panel undertook a detailed review of the Respondent’s rights and legitimate interests and found no indication that the Respondent had registered its “B BOUTIQUE HOTEL” trade mark primarily to circumvent the application of the UDRP or otherwise prevent the Complainant’s exercise of its rights. In particular, the Panel referred to the Respondent’s robust online presence, in particular its YouTube advertising which had reached 10,000 views and its Instagram account, created in 2013, which had 665 posts and over 17,000 followers. The Panel’s conclusion affirmed the Respondent’s legitimate business operations, substantiating its rights and interests.
Despite finding that the Respondent did have rights and legitimate interests in respect of the disputed domain name, which was enough to deny the Complaint, the Panel went on to consider bad faith. It identified no substantive evidence indicating that the Respondent intended to exploit the Complainant’s trade marks or reputation. The absence of bad faith indicators, combined with the Respondent’s proactive efforts to protect its brand, lent substantial support to the Panel’s decision.
Comment
This UDRP decision underscores the importance of genuine, legitimate use and prior trade mark registrations in defending a UDRP case. The decision serves as a reminder to complainants that trade mark rights must be balanced with a comprehensive examination of a respondent’s history and rights, although this is often problematic at the time of filing if the respondent is essentially unknown, as was the case here.
The decision is available here.
A bridge too far
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel refused to order the transfer of the domain name at issue because the Complainant failed to demonstrate that the Respondent had registered and used the domain name in bad faith.
The Complainant was InQuik IP Holdings Pty Ltd, an Australian supplier of bridging products and technology.
The Respondent was DPLiqGr, an individual or entity based in the United States of America.
The disputed domain name, inquik.com, was registered in 2006 and had never pointed to a fully developed website. At the time that the UDRP Complaint was filed, the disputed domain name was pointing to a pay-per-click (“PPC”) website displaying three words, namely “HP Printer Ink cartridges”, “Fast”, and “Quick Lube Nearby”. Before filing the Complaint, the Complainant had approached the Respondent through a domain name broker, proposing a purchase of the disputed domain name for USD 1,000. However, the Respondent never replied to this offer, nor to any subsequent messages from the domain name broker.
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 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 regard to the first limb, the Complainant submitted that it owned an Australian trade mark for the mark INQUIK with a priority date of 13 September 2016, as well as a United States trade mark for the mark INQUIK with a registration date of 13 March 2017. The Respondent did not dispute this and the Panel found that the disputed domain name was indeed identical to the Complainant’s trade mark. The Panel therefore considered that the Complainant had satisfied the first requirement under the UDRP.
In light of its findings under the third limb of the UDRP, the Panel did not comment on the eventual existence of the Respondent’s rights or legitimate interests.
Turning to the third requirement of the UDRP, the Complainant asserted that the disputed domain name had been registered in bad faith. The Complainant argued that its business, launched in 2016, had developed a highly respected and expansive customer network across Australia, New Zealand and the United States of America. The Complainant stated that it had successfully created a significant reputation in the bridge construction industry and in the trade mark INQUIK. The Respondent rebutted these arguments by simply stating that it had registered the disputed domain name ten years before the Complainant came into existence and began using the INQUIK mark.
The Panel agreed with the Respondent and underlined that the disputed domain name had been registered an entire decade prior to the Complainant’s establishment and the commencement of its utilization of the INQUIK mark. The Panel also found that there was no basis in the record to suspect that ownership of the disputed domain name changed hands from a prior owner to the Respondent at some potentially relevant point in time, i.e., after the Complainant began using the INQUIK mark. Furthermore, the Panel found that, apart from two “fairly esoteric” industry awards from 2019 and 2021, the Complainant had offered no details or evidence about the extent of its advertising of the INQUIK mark or the actual degree of consumer renown attaching to that mark. Accordingly, the Panel decided that the Respondent had not registered and used the disputed domain name in bad faith and so the Complainant had not satisfied the third requirement under the UDRP. Therefore, the Panel denied the transfer of the disputed domain name to the Complainant.
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 under the UDRP, even if it is identical to such trade mark. As underlined by the Panel, it is therefore crucial to provide necessary evidence to support the submissions in the complaint. Such evidence may include not only trade mark registrations and industry awards, but also market surveys and studies, media coverage and press releases, customer testimonials and user generated content, web traffic and online analytics, product sales and market share, elements of consumer outreach as well as brand building.
Evidence is particularly important when a domain name was registered or acquired before a complainant acquired trade mark rights. Such cases often fail under the UDRP except in very specific circumstances indicting bad faith, such as significant media attention, insider knowledge or the filing of a trademark application by a complainant. Cases where a complainant also initially attempts to buy a domain name before filing a UDRP (commonly known as “Plan B” cases) are doubly doomed.
The decision is available here.
The central role of the UDRP: abusive cybersquatting cases
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 the circumstances around its registration and use could not sufficiently demonstrate abusive cybersquatting.
The Complainant was Kallpa Generación S.A., a Peruvian company dedicated to the generation, transmission and distribution of electric energy, as well as the production of hydrocarbons from natural gas. It was the owner of the Peruvian trade mark for KALLPA since 2019 and had held, between 2006 and 2016, trade mark rights for CENTRAL KALLPA in Peru.
The Respondent was revealed by the registrar to be an individual based in Peru, although the domain name was pointing to a website making reference to a company called Kallpa Gas Ingeniería y Servicios SAC, incorporated in Peru in 2012, and the Response was filed in the name of this entity. The Panel therefore decided to name both parties as joint Respondent.
The domain name was kallpagas.com, registered on 10 January 2013.
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 KALLPA trade mark, which was entirely incorporated in the domain name with the addition of the descriptive term “gas”. The Respondent mainly argued that the goods and services covered by the Complainant’s trade mark were not identical, nor related to those offered through the website to which the domain name resolved.
The Panel accepted the Complainant’s arguments, finding that the addition of the term “gas” was not sufficient to avoid confusing similarity with the Complainant’s mark. 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 term “Kallpa Gas”, underlining that the Respondent’s trade mark application for this term was recently denied by the Peruvian IP office (INDECOPI). The Respondent countered that the domain name corresponded to its trade name, under which its company had been operating since 2012. The Respondent further argued that the term “kallpa” was commonly used in the Quechua language, meaning “effort, energetic use of physical force, vigor or activity of the mind”.
In order to address the central question as to whether the Respondent genuinely adopted the term KALLPA GAS as part of its business name, without intent to target the Complainant’s trade mark rights, the Panel considered the assertions and evidence submitted by both parties. The Panel first found it plausible that the Respondent could have selected the term “kallpa” given its meaning in the Quechua language, independently of the Complainant’s trade mark rights. More importantly, the Panel underlined that the Respondent appeared to have operated a business of some substance under its business name prior to the registration of the domain name. Furthermore, the Panel was not convinced that the Complainant’s reputation had any impact on the Respondent’s choice of business name or the domain name, especially noting that the two parties operated in different businesses and provided different type of services. On this basis, the Panel concluded that this dispute could not reasonably be considered to be a “clear case of cybersquatting” of the type that the UDRP was intended to address and, for that reason, the Complainant had failed to establish the Respondent’s lack of rights or legitimate interests in the domain name. The second limb was therefore not satisfied and the Complaint was denied.
Although it was not strictly necessary for the Panel to address the third limb, for the sake of completeness the Panel went on to assess this and the question of bad faith. In this regard, the Complainant contended that it had become a well-established company in its industry before the domain name was created and so the Respondent could have been aware of the Complainant and its KALLPA CENTRAL trade mark then in force when registering the domain name in 2013. However, the Panel found no decisive evidence proving that the Respondent had registered the domain name to trade upon the Complainant’s rights, as opposed to selecting the term “kallpa” based on its dictionary meaning in the Quechua language. In the absence of any other indicia of bad faith, such as the Respondent’s intent to sell the domain name to the Complainant or its use of this name to create confusion with the Complainant and its business, the Panel was persuaded that it was more likely that the domain name had been registered to reflect the Respondent’s trade name and to promote its own products and services.
Additionally, the Panel pointed out that the denial of the Respondent’s trade mark application in Peru could not be considered as evidence of bad faith in this case, noting that the Complainant’s KALLPA trade mark registration had also been partially cancelled by INDECOPI based on the Panel’s limited investigation. In the Panel’s view, this underlined that the term “kallpa” was used in Peru by different parties, in distinct sectors, offering varying products and services. Finally, the Panel noted that this matter appeared to fall outside of the scope of the UDRP and thus would perhaps be better adjudicated by the administrative authorities and/or courts of competent jurisdiction.
Comment
This case provides interesting insight into the circumstances in which a registrant may successfully claim rights or legitimate interests in a domain name reflecting its business / corporate name. As illustrated by this dispute, such circumstances may include the registrant’s substantive business operations under the same name prior to the registration of the disputed domain name, as well as the lack of factors suggesting the targeting of a pre-existing trade mark. It is therefore advisable for brand owners to undertake a thorough assessment of the history and use of a domain name before taking action under the UDRP, and to keep in mind that it was not designed to deal with all types of disputes relating to domain names, only those relating to abusive cybersquatting.
The decision is available here.
https://www.jdsupra.com/legalnews/domain-name-news-september-2023-anchovy-9655891/
