Domain Name News: March 2023 | Hogan Lovells
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Upcoming launch of nine new gTLDs
The Google domain name Registry and Identity Digital are launching nine new generic Top Level Domains (gTLDs) virtually at the same time, thereby multiplying the possibilities for internet users to register valuable domain names.
A few days ago, Identity Digital, which has a large portfolio of new gTLDs, including .LIVE, .LIFE and .WORLD (for the most popular ones), launched .WATCHES – “the TLD for watch connoisseurs” as per its announcement.
The launch is taking place as follows:
- Sunrise: 28 March – 27 May 2023
During this period, trade mark holders who have registered their trade marks with the Trade Mark ClearingHouse (TMCH) will be able to apply for the corresponding domain names under .WATCHES.
- Early Access Period (EAP): 31 May – 7 June 2023
During this period, available .WATCHES domain names can be registered by anyone on a first come, first served basis for an extra fee, which will decrease leading up to General Availability.
- General Availability: 7 June 2023 onwards
As from this date, anyone will be able to register available .WATCHES domain names on a first come, first served basis, at the regular price.
In turn, as announced recently, the Google domain name Registry, which runs various new gTLDs, including .APP, .DEV and .PAGE, will soon launch eight new gTLDs, a few months after launching .BOO and .RSVP last October.
These new gTLDs are .DAD, .ESQ (short for “esquire”, aimed at “lawyers or distinguished people”), .FOO (a term commonly used by developers), .NEXUS (“a secure domain that brings it all together”), .PROF and .PHD (aimed at professors and those with doctorates), and finally .ZIP and .MOV.
All eight TLDs had been dormant for a while as they were delegated by the Internet Corporation for Assigned Names and Numbers (ICANN) in 2014, except for .PHD which was delegated in 2017. They are all secure namespaces, meaning that HTTPS will be required for the websites. Therefore an SSL certificate will need to be obtained by registrants so that their domain names can resolve in browsers.
These eight TLDs will all follow the same launch schedule:
- Sunrise: 2 April – 3 May 2023
- Early Access Period (EAP): 3 May – 10 May 2023
- General Availability: 10 May 2023 onwards
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.XXX Sunrise B domain names to be released
GoDaddy has recently announced that they will be releasing, and making available for registration, thousands of .XXX domain names currently reserved at the ICM Registry.
The .XXX extension was launched in 2011 and .XXX Sunrise B registrations allowed trade mark and service mark owners to “block” their marks from being registered under .XXX. In theory these domain names were to subsist indefinitely, or at least as long as the ICM Registry was mandated by ICANN to run the .XXX Registry (the contract was for 10 years). Thus the theoretical “renewal” date for these “blocks” was 1 December 2021. However, the ICM Registry subsequently expanded / converted the protection service into the AdultBlock service to include .SEX, .PORN, and .ADULT in addition to .XXX, and changed the duration of the service to one year.
GoDaddy Registry is the backend provider for the AdultBlock product. The reserved domain names to be released by GoDaddy comprise the .XXX Sunrise B (SRB) domain names that did not convert to AdultBlock (the “SRB List”) in December 2021. Trade mark rights holders will be given the opportunity of securing their domain names before they are made available to the general public.
There will be two phases to the release, as follows:
- Phase One – Verified Rights Phase: 16 March 2023 – 18 May 2023
During this phase, reserved .XXX domain names will be made available to the original registrants through a token which they will need to provide to their registrar. Entities that can demonstrate a valid right corresponding to a released domain name may also be able to register it.
- Phase Two – General Release: 22 May 2023 – 22 May 2023
All remaining reserved domain names that have not been registered during Phase One will be available for registration by the general public on a first-come, first-served basis. Some of them may become premium domains during this phase and command a higher registration fee.
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TitleEURid publishes its Q4 2022 Report
EURid, the Registry responsible for maintaining the country code Top Level Domain (ccTLD) .EU (European Union) recently published its report for the fourth quarter of 2022.
The report shows continued growth in the .EU domain name space with a total of 3,702,264 domain names, which was an increase of 186,117 new domain name registrations over the last quarter. However, the average renewal rate for .EU domain names saw a decline from 85% in quarter 3 to 78% in quarter 4.
The country split for the top 10 holders of .EU domain names is as follows:
Germany (997,352), Netherlands (463,116), France (305,672), Italy (272,302), Poland (228,700), Portugal (177,382), Czech Republic (176,956), Austria (157,907), Belgium (146,859) and Spain (131,745).
The jurisdictions showing the most growth under .EU were Luxembourg (+15.9%), Bulgaria (+1.6%) and the Czech Republic (+1.2%).
The growth of the TLD has come in spite of the fact that, as a result of the United Kingdom leaving the European Union, and based on the eligibility requirements for .EU, EURid no longer accepts new registrations from registrants based in the UK or Gibraltar as of 1 January 2021.
The report is based on statistics published by the Council of European National Top-Level Domain Registries (CENTR) and shows that .EU remains competitive, sitting in 5th place. Indeed at the end of Q4 2022, the top ten CENTR ccTLDs by number of domain names were as follows:
.DE (Germany) – 17,409,545
.UK (United Kingdom) – 11,154,983
.NL (Netherlands) – 6,286,643
.FR (France) – 3,979, 042
.EU (European Union) – 3,673,563
.IT (Italy) – 3,472,598
.CA (Canada) – 3,327,871
.AU (Australia) – 3,239,582
.CH (Switzerland) – 2,518,386
.PL (Poland) – 2,511,327
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UDRP complaint won’t resolve trade mark dispute
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of the Domain Name at issue, finding that the Respondent had rights in the Domain Name based on its registered trade mark, notwithstanding the fact that the Complainant had filed a cancellation action.
The Complainant was Future Inns UK Limited, a company operating a chain of hotels in the UK since 2005. It promoted its hotels through its website using the domain name futureinns.co.uk, registered in 2002, and via various online publications. In addition to its online presence, the Complainant also held a UK trade mark in FUTURE INN, registered in 2003. The Respondent was seeking cancellation of this trade mark in a parallel trade mark action.
The Respondent was Sotirios Kopatsaris, the founder and CEO of a company named Future Hotels International Single Member PC, incorporated in Greece in February 2019. He was also the sole director and majority shareholder of Future Hotels Limited, incorporated in the UK in 2020. Future Hotels Limited owned a UK trade mark in FUTURE HOTELS, registered in 2020. The Complainant was also seeking cancellation of this trade mark in a parallel trade mark action.
The disputed Domain Name was thefuturehotels.com, registered on 21 January 2019. Shortly before the Complaint was filed, it resolved to a website promoting the Respondent’s “Future Hotels”, described as “a global community of award-wining hoteliers, technologists, researchers and travel agents, on a mission to redefine what it means to be an independent hotel in the 21st century – and beyond.”
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.
Under the UDRP, a Panel is required to address two main issues under the first limb: (i) whether the complainant has sufficiently proven relevant trade mark rights and (ii) whether the disputed domain name is found to be confusingly similar to such trade mark rights on a straightforward visual and aural comparison, this test being much narrower than the “likelihood of confusion” test under trade mark law. Questions such as the scope of trade mark rights and the geographical location of the respective parties are not relevant (although may be considered further under the other limbs, if relevant).
With regard to (i), the Panel considered that the Complainant had long-standing trade mark rights in FUTURE INN, and such rights should not be presumed to be invalid merely due to the fact that the Respondent had initiated cancellation proceedings. As regards (ii), the Panel found confusing similarity between the Complainant’s FUTURE INNS trade mark and the disputed domain name, thefuturehotels.com, despite the fact that the Respondent’s successful registration of its FUTURE HOTELS trade mark implied that there was no confusing similarity. However, the Panel underlined the narrower test under the UDRP and found that the Domain Name did include the dominant element “future” that distinguished the Complainant’s hotel services, and agreed that there was a high degree of conceptual overlap between the terms “inns” and “hotels”. The Panel also referred to the content of the Respondent’s website offering hotel-related services as an additional factor reinforcing the risk of confusion. The first limb was therefore satisfied.
Regarding the second limb, the Complainant stated that the Respondent was not authorised to use its trade marks and the Domain Name was not derived from the Respondent’s own name. The Respondent’s use of the Domain Name to promote his hotels therefore could not be considered as bona fide use nor legitimate noncommercial or fair use under the Policy. The Respondent essentially contended that the Domain Name was derived from the name of his companies and registered in anticipation of his business expansion in the UK. The Respondent further argued that he was not aware of the Complainant and its business when registering the Domain Name in 2019.
The Panel first addressed the issue regarding the Respondent’s prior knowledge of the Complainant’s trade marks at the time of registration of the Domain Name. On the one hand, since the two parties appeared to be in the same or closely related industries, it seemed likely that the Respondent may have been aware of the Complainant and its business when registering the Domain Name. However, on the other hand, given the geographical distance between the locations where the two parties were based (i.e., the UK and Greece), the possibility that the Respondent had never heard of the Complainant at least before it sought to expand its business in the UK could not be entirely excluded.
Faced with this dilemma, the Panel considered that the Respondent’s ownership of a registered UK trade mark for FUTURE HOTELS constituted a decisive factor in this case. The Panel underlined that this trade mark had been successfully registered in the UK, despite the Complainant’s prior trade marks in FUTURE INN, and was valid pending the outcome of the Complainant’s cancellation action. The Panel therefore held that the owner of the trade mark, Future Hotels Limited, had a prima facie right to make use of this term. Consequently, the Respondent, who controlled Future Hotels Limited, could claim the benefit of that right and use the Domain Name to promote his hotel business.
Given the above, the Panel held that the second limb was not satisfied and thus there was no need to address the third limb. The Complaint was therefore denied.
UDRP Panels will not generally consider the validity of existing trade mark rights as this is outside the scope of the UDRP. Brand owners involved in parallel trade mark proceedings would therefore be well advised to wait until such proceedings have been finally determined before considering a UDRP complaint.
The decision is available here.
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Beware when domain names pre-date trade mark rights
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied a UDRP Complaint for the disputed Domain Name unicaf.com. The decision was on the basis that the Complainant had failed to show that the Respondent registered and used the Domain Name in bad faith. The Panel also entered a finding that the Complainant had engaged in Reverse Domain Name Hijacking (RDNH).
The Complainant was UNICAF LTD, a Cypriot company running an online platform linked to higher education. The Complainant’s corporate name, UNICAF LTD, had been registered in the Register of Companies for Cyprus since 2019, although previously, from 2012, it had been UNIC ONLINE LIMITED.
The Complainant was the owner of European Union Trade Mark No. 013502075 UNICAF (figurative), registered on 5 May 2015. The Complainant also owned domain names such as unicaf.org (registered in 2013) and unicafuniversity.com (registered in 2014).
The Respondent was an individual located in Canada. The Respondent registered the Domain Name on 18 November 2011. It resolved to a Pay-Per-Click page (PPC page) which included links related to university scholarships.
The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name.
The Complainant argued that it had established all three elements required under paragraph 4(a) of the Policy for a transfer of the Domain Name.
The Respondent claimed that he had registered the Domain Name in 2011, much earlier than the change of corporate name of the Complainant which took in place in 2019.
He also stated that he had no intention of taking advantage of the Complainant’s programs, and that the corresponding website did not look like the Complainant’s website.
Finally, the Respondent had sought a finding of Reverse Domain Name Hijacking (RDNH).
To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements:
- The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
- The respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
As far as the first limb was concerned, the Panel accepted that the Complainant owned a registered trade mark for UNICAF and that the Domain Name included the trade mark in its entirety and was therefore identical to the trade mark in which the Complainant had rights.
The Panel did not consider the second limb in light of its analysis of the third limb. In this regard, the Panel found that the Complainant had not satisfied the third limb as it had failed to prove that the Respondent had registered and used the Domain Name in bad faith. The Panel noted that the Respondent registered the Domain Name in 2011, whereas the Complainant filed its UNICAF trade mark in 2014. The Panel noted that where a respondent had registered a domain name before a Complainant’s trade mark rights had accrued, panels would not normally find bad faith on the part of the respondent.
Furthermore, the Panel underlined that the Complainant had been initially incorporated in 2012 under the name UNIC ONLINE LIMITED and had only registered domain names containing the term “unicaf” from 2013.
Consequently, the Panel stated that there was nothing in the record to suggest that the Respondent might have had the Complainant in mind when registering the disputed Domain Name in 2011, or even that the Complainant was active at the time.
The UDRP Rules define Reverse Domain Name Hijacking (RDNH) as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name”.
In the present case, taking into account the circumstances detailed above, the Panel found that the Complainant had engaged in RDNH.
Complainants should think seriously about filing a UDRP complaint if their trade mark was registered after the domain name at issue. As section 3.8.2 of the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, notes, if this is the case, panels are prepared to find that a respondent has acted in bad faith only in certain very limited circumstances, where the facts of the case establish that the respondent’s intent in registering the domain name was to unfairly capitalise on the complainant’s nascent trade mark rights. For example, such scenarios include registration of a domain name shortly before or after the announcement of a corporate merger or further to a respondent’s insider knowledge. If there is no evidence to suggest that the respondent had the complainant in mind when registering a domain name, then the complaint will almost certainly be denied. In addition there is a high risk that the panel will make a finding of RDNH.
The decision is available here.
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Complainant hampered by lack of rights
In a recent decision under the Uniform Domain Name Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of four domain names, finding that the Complainant had failed to prove that the domain names were identical or confusingly similar to a trade mark or service mark in which the Complainant had rights.
The Complainant was The Estate of Sheldon Solow, a American real estate developer and art collector. The Respondent was an individual activist and community volunteer.
The disputed Domain Names: sheldonsolow.com, sheldonsolow.org, solowfoundation.com and solowfoundation.org were registered by the Respondent in December 2016. They all resolved to the same parody website containing information about a non-profit art museum in New York City operated by the Solow Foundation, highlighting that it purportedly created tax benefits for the Solow family but yet remained closed to the public.
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, although the Foundation had no current trade mark registrations, the Sheldon Solow name was a reputed name under which the Foundation conducted its non-profit activities and therefore, due to its distinctiveness, the name had acquired sufficient secondary association with the Complainant’s activities. The Complainant underlined that the Foundation intended to register its name as a trade mark in International Class 41 for museum services. Finally, the Complainant added that its popularity could be measured by the fact that there were 171,000 search results obtained by typing the term “Sheldon Solow” into Google’s search engine.
The Respondent argued that the Complainant had failed to provide any evidence in relation to the distinctiveness of the Solow name and its association with the Complainant’s goods or services. In addition, the Respondent stressed that no trade mark application mentioned by the Complainant was present in any register, and the name “Solow” did not appear in the databases containing trade marks already registered, nor those submitted for registration. The Respondent underlined that the mere fact that Mr Solow was well-known was not sufficient to prove that the Complainant had rights to the name under the rules of the UDRP. The Respondent further argued that, even if the Complainant at one point had acquired common law rights in the “Solow” name, the Complainant had subsequently changed the name to “Soloviev” and therefore waived its potential rights. Furthermore, the Respondent asserted that, even if trade mark rights in the “Solow” name existed, the ownership of such rights would be uncertain given that Mr Solow’s activities appear to have been conducted by various business entities and none of these entities were complainants in the present proceedings.
The Panel agreed with the Respondent and found that the Complainant had effectively failed to provide evidence that Mr Solow’s name, or the name of the Solow Foundation, could be considered as distinctive marks which consumers would associate with goods or services offered by Mr Solow or the Solow Foundation so as to give rise to common law trade mark rights in either name. The ruling was further fortified by evidence that the Foundation had changed its name from “The Solow Art & Architecture Foundation” to “The Soloviev Foundation”.
In light of its findings under the first limb, the Panel did not need to comment on the eventual existence of the Respondent’s rights or legitimate interests or bad faith. However, the Panel decided to address these points anyway in order to note its disagreement with the Respondent on whether the Domain Names would qualify under a parody exception had the Complainant established any relevant trade mark rights.
Under the second and third limbs of the UDRP, the Complainant stated that the Respondent had not received approval to use Mr Solow’s name and the name of his Foundation. The Complainant also stressed that the Respondent was not known by these names. Furthermore, the Complainant argued that the registration of the Domain Names prevented the Foundation from establishing an online presence. As such, in the Complainant’s opinion, the Respondent had registered the Domain Names in order to disrupt the business of Complainant and such registration would lead to commercial harm to the Complainant.
The Respondent rebutted these arguments by stating that the sole purpose of the website at the Domain Names was to criticise. Furthermore, the Respondent argued that he had never in any way profited commercially from his registration and use of the Domain Names. The Respondent also pointed out that the website clearly disclosed the lack of affiliation with the Complainant as it contained a statement that the website was created by “[a]n art enthusiast who would like to visit the collection, but has not received any reply to inquiries by phone, in person, and email”.
The Panel disagreed with the Respondent and found that the Domain Names effectively impersonated Mr Solow and his Foundation. According to the Panel, registrants remained free to select a domain name as long as the domain name itself made it clear that the registrant was not affiliated with or authorised by the trade mark holder.
This decision underlines that merely having a famous name does not automatically equate to unregistered or common law rights for the purpose of standing to file a UDRP complaint. In addition, the decision serves as a reminder that domain names identical to a complainant’s rights carry a high risk of implied affiliation. As such, those wishing to set up a criticism or parody website should choose their domain name wisely, ensuring that it differs from the trade mark holder’s rights, for example by adding an additional distinguishing term.
The decision is available here.
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