Domain Name News: May 2024 | Hogan Lovells
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- Domain name recuperation news
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Nominet introduces new solution for ID checks
Nominet, the Registry responsible for running the .UK country code Top Level Domain (ccTLD), has recently implemented a new technical solution for ID checks. The new checks will be carried out by a third party provider and are designed to ensure that Nominet is “always acting with the appropriate authorisation in relation to .UK domain names”.
The new checks will be used whenever Nominet needs to verify that the person making a specific request, such as a request for new login details to access a Nominet Online Services account, is authorised to do so. Nominet is aiming for the new technical solution to improve and simplify the procedure for its customers, whilst as the same time ensuring that the “high level of security and protection” for .UK domain names is maintained.
The provider of the new technical solution also provides services to various UK financial institutions, banks and payment providers. In the event that Nominet needs to check a customer’s identification, they will be asked to confirm their identity via a link to the provider, which will in turn direct the customer to complete a step-by-step process. This will involve completing a “liveness check” in order to verify that the application is being made by a “real human”. The customer will also need to upload supporting documentation to confirm their identity, such as a passport or driving license, as well as a proof of address document, such as a utility bill or bank statement. Nominet also noted that in some cases customers may need to provide additional documentation.
Customers will need to complete the verification process within seven days of the process being started. After this, the verification process will expire and customers will need to restart it.
This move by Nominet is the most recent in a series of improvements instituted by various Registries around the world seeking to heighten security, bolster consumer confidence and combat bots and fraud in the domain name system.
An ad for Andorra
Andorra Telecom, the Registry for the Andorran Top Level Domain (TLD) .AD, recently kicked off a major liberalisation project for the .AD extension that will see it becoming available to all registrants without restriction towards the end of this year. Once liberalised, the extension has the potential to generate significant interest among registrants as a pseudo generic, or “domain hack” (like Montenegro’s .ME and Tuvalu’s .TV), given its correlation with the abbreviation for “advertisement” in English.
The .AD extension was previously heavily restricted, being available only to the owners of business names registered in Andorra or the holders of registered trade marks with effect in Andorra. Domain name registrations were previously handled manually via the Registry directly, but the Registry has modernised its systems and adopted a standard registrar model.
The liberalisation of the .AD TLD will roll out according to the following phases:
Transition Phase (22 May 2024 – 16 October 2024)
The Transition Phase combines an Opening Phase and a Landrush Phase.
The Opening Phase runs from 22 May 2024 to 4 September 2024 and, under this phase, applications will be accepted (in the following order of priority) for:
- corporate names for Andorran legal entities
- foreign trade marks without effect in Andorra (registered before 22 May 2024)
- names of Andorran citizens or residents
- names matching domain names in other TLDs (registered before 22 May 2024)
The Landrush Phase runs from 5 September 2024 to 16 October 2024 and this phase will see applications opened up to names without previous rights or priority, i.e., it will be open to any name not covered by one of the above categories.
In the event that multiple identical applications are submitted within the same category, the Registry will attempt formal or informal mediation and, where no agreement can be reached, an auction will take place.
General Availability – from 22 October 2024
From this date, domain names will be available without restrictions on a first-come, first-served basis.
Internationalized Domain Names (IDNs) are available in .AD, including the Catalan language characters à, ç, è, é, í, ï, l·l, ò, ó, ú and ü.
To date, the Registry has not announced the adoption of any alternative dispute resolution procedure relating to domain names. Given that registrations will be open to holders of matching domain names registered in other TLDs (without the need for a trade mark) as early as the Opening Phase, we would advise brand owners to also consider applying for their brands during this phase.
Should you require assistance in relation to .AD domain names, please contact David Taylor or Jane Seager.
AFNIC publishes 2023 study on .FR activity
AFNIC, the French domain name Registry, which operates the .FR country code Top Level Domain (ccTLD) as well as .RE (Reunion Island), .PM (Saint-Pierre and Miquelon), .TF (French Southern and Antarctic Lands), .WF (Wallis and Futuna) and .YT (Mayotte), recently published its annual report on .FR activity, which shows continued growth for 2023.
According to the study, there were close to 4,134,000 registered .FR domain names as of 31 December 2023, which represents a 3.4 % increase in the number of domain names in one year. This growth is noticeable compared to the previous year (+2.9 % between the end of 2021 and the end of 2022).
AFNIC recorded 801,427 new .FR domain name registrations in 2023, which represents a significant increase (+6.4%) from 2022 to 2023, and actually an all-time record since it is the first time that the threshold of 800,00 new registrations has been exceeded, which, according to AFNIC, “highlights the phenomenon of acceleration of digital transformation” by businesses and is a measure of their trust in the national TLD which is considered stable and reliable.
It is worth noting that deletions of .FR domain names have also increased significantly (+7% in one year). This is explained by both a higher volatility of .FR registrations, resulting in domain names not being renewed after the first year, and AFNIC’s stricter policy in terms of combating online abuse.
The report also stresses the growth of .FR within the domain name market in France as it gained 0.9% of market share while .COM lost 0.8%. At the end of 2023, .FR represented 40.3% of the French market share, compared to 39.4% at the end of 2022.
As of mid-January 2024, there were about 4.14 million domain names under .FR. The French ccTLD is the 8th largest ccTLD worldwide in terms of volume of domain name registrations as per the latest Industry Brief published by Verisign, behind .CN (20.3 million domain names), .DE (17.7 million) and .UK (10.7 million) to name but the top three.
For more information on the registration or recuperation of .FR domain names, please contact David Taylor or Jane Seager.
Verisign Report Q1 2024
VeriSign, Inc., a global provider of domain name Registry services and Internet infrastructure, recently released a report on its results for the first quarter of 2024 which confirms a dip in the registration numbers for the two main generic Top Level Domains (gTLDs) that it operates, namely .COM and .NET.
According to the report, there were 172.5 million .COM and .NET registered domain names at the end of the first quarter for 2024, representing a decrease of 1.3% in one year, and a net decrease of 0.27 million domain names for the first quarter of 2024.
During the first quarter of 2024, there were 9.5 million new domain name registrations for .COM and .NET, compared with 10.3 million for the first quarter of 2023.
The final .COM and .NET renewal rate for the fourth quarter of 2023 was 73.2%, compared to 73.3% for the same quarter of 2022.
Jim Bidzos of Verisign, Inc stated that: “while we expect that the change in the domain name base for 2024 will be below historic levels…we continue to believe our business fundamentals remain strong” and went on to add that Verisign is “introducing additional registrar marketing programs to target quality growth in the domain name base. These programs will become active during the second half of 2024. We expect these programs to begin improving registration trends during 2024 and to contribute to a return to growth in 2025.”
Only time will tell if these actions reverse the trend and numbers pick up again.
Difficulties with dictionary words
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied a complaint in relation to the disputed domain name motherhood.ai because the Complainant failed to prove bad faith registration and use on the part of the Respondent.
The Complainant was Maternity IP Holdings LP, an American maternity clothing supplier. The Complainant held several trade mark registrations for MOTHERHOOD, including a United States trade mark and a United Kingdom trade mark and also held an International trade mark in the word MOTHERHOOD MATERNITY. The Complainant also owned the domain name motherhood.com, from which it operated its main website.
The Respondent was an individual based in France.
The Domain Name was registered in 2021. On 3 April 2024, the disputed domain name resolved to a website offering it for sale with a starting price of USD 30,000.
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.
Firstly, the Complainant challenged the legitimacy of the Respondent’s activities, asserting that the Respondent was not engaged in the bona fide provision of goods or services. Rather, it claimed that the Respondent was diverting customers by using a domain name closely associated with the Complainant.
Moreover, the Complainant contended that the disputed domain name, coupled with the .AI country code Top Level Domain (ccTLD), was misleading and intended to deceive Internet users. While .AI commonly connotes artificial intelligence, the Complainant argued that its use in this context may lead internet users to believe that there was an authorised association or endorsement by the Complainant, especially considering that the disputed domain name resolved to a webpage advertising the disputed domain name for sale. The Complainant further asserted that the Respondent acquired the disputed domain name with the primary intent of reselling the domain name to the Complainant or a competitor. To support its allegations, the Complainant relied on the fact that the disputed domain name had only ever resolved to a sales page and was linked to a domain trading website, which in its view was strongly indicative of cybersquatting.
Additionally, the Complainant held that its trade mark enjoyed a global reputation, suggesting that the Respondent likely had the Complainant in mind when registering the domain name. The Complainant argued that the use of USD as a currency to sell the domain name demonstrated a deliberate targeting of the United States market, where the Complainant enjoyed substantial recognition.
Finally, the Complainant asserted that the passive holding of the domain name, as well as the use of a proxy service to register it, further evidenced the Respondent’s bad faith.
The Respondent did not submit a Response.
Regarding the first limb, the Panel found that the Complainant had rights in various trade marks in the term MOTHERHOOD and that the entirety of the mark was reproduced within the disputed domain name. Thus, the Complainant satisfied the first element set out in paragraph 4(a) of the UDRP.
The Panel deemed it unnecessary to consider the second element of the UDRP, given the Complainant’s failure to establish the third element.
With regard to the third requirement, the Panel found that the disputed domain name was comprised of the common dictionary term “motherhood”. Moreover, the Panel considered that the Complainant’s evidence regarding its reputation, particularly in the United States, was insufficient. The screenshots provided primarily highlighted awards related to MOTHERHOOD MATERNITY, failing to establish reputation for the term MOTHERHOOD in itself. Furthermore, the Panel found that the Complainant had presented no evidence to support its alleged global reputation, including in France where the Respondent was located.
The Panel agreed that the .AI ccTLD (denoting the Caribbean island of Anguilla) could commonly signify artificial intelligence to internet users. However, the Panel found that the Complainant had failed to present any evidence that internet users would associate the Complainant with this term.
The Panel held that there was a lack of evidence indicating the Respondent’s use of the disputed domain name in connection with the Complainant’s industry or to target the Complainant in any way. Therefore the Panel ruled that there was no evidence showing that the Respondent had registered the disputed domain name to profit from or exploit the Complainant’s trade mark.
The Panel dismissed several bad faith arguments put forth by the Complainant, notably the fact that the disputed domain name was offered for sale on a website containing links to a domain name trading website. In the Panel’s opinion, offering a domain name for sale did not conclusively imply bad faith intent, especially given the descriptive nature of the term motherhood and absence of direct targeting of the Complainant. In short, the Complainant had not evidenced that, on balance, the Respondent had likely acquired the disputed domain name to sell to the Complainant based on the Complainant’s trade mark, rather than to sell it to anyone as dictionary-word domain name.
Moreover, the offering of the disputed domain name for sale in USD was not viewed by the Panel as evidence of targeting of the United States market or the Complainant’s alleged fame in that region, given the lack of substantiated evidence in that regard. Furthermore, merely offering a dictionary word domain name for sale did not equate to customer diversion or confusion with regard to an entity that happened to own a corresponding trade mark.
Finally, the Panel concluded that the Respondent’s use of proxy services to obscure contact information was not inherently indicative of bad faith, considering that such services were now very common. Thus, despite the Respondent’s default, the Panel concluded that the Complainant had failed to establish bad faith on the part of the Respondent under the third limb of the UDRP and the case was denied.
Comment
The decision serves as a cautionary tale for trade mark holders to carefully assess their legal strategies and evidentiary support when engaging in UDRP proceedings, particularly when confronted with domain disputes involving trade marks that are also potentially descriptive. In such cases, establishing proof of bad faith targeting can be especially challenging and result in denial, even if the respondent fails to file a response.
The decision is available here.
Competing interests: the UDRP is not a general domain name court
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 nomenagency.com. The Panel was not prepared to find, on the balance of probabilities, that the Respondent had targeted the Complainant when registering the Domain Name and found that the Parties most likely had competing interests in the name “nomen”, being, or claiming to be, branding agencies.
The Complainant, NOMEN International, contended that it was a well-known agency specialising in the creation of names. The Complainant held two trade marks for NOMEN, registered in France and in the EU in April 2002 and March 2005 respectively. The Complainant was using the domain name nomen.com for its business.
The Respondent, Proaudit Oy, registered the Domain Name on 14 September 2023. Approximately eleven days prior to the filing of the Complaint, the Domain Name resolved to a web page titled “Nomen Agency / Maximize the Value of Your Brand’s Name”.
To be successful in a complaint under the UDRP, a complainant must satisfy each of the following three 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 had satisfied each of the elements required under the Policy, including that it had trade mark registrations for NOMEN, that the disputed Domain Name was identical or confusingly similar to its trade mark and that at no time did it authorise or license the Respondent to make any use of its NOMEN trade mark, in a domain name or otherwise. The Complainant also argued that as a leader in the field of name creation, the Respondent must have been aware of the Complainant’s existence when registering the Domain Name for an identical or similar activity, and that the Respondent had intentionally attempted to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade marks.
The Respondent contended, via email to the Center rather than through a formal Response, that it was linked to a registered company in Finland named “Nomen Agency Oy” that specialised in providing video and photography solutions, and registered the Domain Name to reflect this and to establish a consistent online presence. The Respondent also noted that it was unaware of the Complainant and its activities before receiving the Complaint, that its own activities were primarily specialised in providing photography and video solutions and that it had made “some changes on our website, so there should be no reason for confusion”.
The Panel found that the first limb of the Policy was established, as the Complainant had rights in the trade mark NOMEN and the Domain Name was confusingly similar to the trade mark for the purposes of the Policy, notwithstanding the addition of the term “agency”.
The Panel declined to address the second limb, i.e., the Respondent’s rights or legitimate interests, in light of its analysis under the third limb.
Regarding the third limb of the Policy, ultimately the Panel found that there was insufficient evidence to find that the Respondent had prior knowledge of the Complainant’s rights when it registered the Domain Name. As a result, the Panel was unable to find that the Complainant had targeted the Complainant when it registered the Domain Name.
Whilst the Complainant provided a copy of search engine results for “nomen” that it claimed were from Google and showed that the Complainant’s agency appeared at the top of the results, the Panel noted that the identity of the search engine was not specified, nor was there any indication of where the search was executed, with the Panel noting that search engines usually provide localised search results. Moreover, the Panel found that the search results showed that the term “nomen” had a variety of ordinary meanings and featured multiple dictionary definitions of the term as a German and Latin word listed ahead of the result that appeared to relate to the Complainant.
In light of the lack of evidence of targeting, as well as the fact that both Parties were, or claimed to be, branding agencies, the Panel found that it was most likely that the Parties had competing interests in the name “nomen”. The Panel did, however, acknowledge the Complainant’s trade mark rights in the term “nomen” and noted that the question of whether the Complainant could make out a case of trade mark infringement against the Respondent in a competent forum was a separate inquiry outside the scope of the present UDRP proceedings. The Panel noted that the UDRP was designed to address cybersquatting rather than to act as a general domain name court or indeed to deal with trade mark infringement, although there was some conceptual overlap between trade mark infringement and the abusive registration of domain names.
Comment
The case underlines the importance of adducing clear, undisputable evidence of targeting when filing a UDRP Complaint, particularly where the relevant trade mark is a dictionary term in any language. While there is some conceptual overlap between trade mark infringement and the abusive registration of domain names, the requirement for a complainant to prove bad faith registration and use of a domain name sets the UDRP apart from a trade mark infringement claim and conclusory allegations will not suffice.
The decision is available here.
UDRP complaint fails, because.com, no evidence of fame
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 disputed domain name because.com, finding that the Complainant had failed to prove that the Respondent had registered the disputed domain name in bad faith.
The Complainants (referred to collectively as the “Complainant”) were two related companies; Because Music SAS, a French company established in 2005, operating an independent music label, together with OEE Ltd, the owner of Because Music SAS, based in the United Kingdom. The Complainant OEE Ltd was the owner of a number of trade marks for BECAUSE, including French Trade Mark Registration No. 3313560, applied for on 14 September 2004.
The Respondent was a domain name investor holding a portfolio of domain names.
The disputed domain name was first registered on 4 December 1995. The Complainant was the registrant of the disputed domain name from June 2007 to December 2021, at which point the Complainant failed to renew the disputed domain name. In 2022, the Respondent acquired the disputed domain name from the domain name sales platform Sedo.com. The disputed domain name resolved to a parking page displaying Pay-Per-Click (“PPC”) links. According to evidence submitted by the Complainant, the disputed domain name was offered for sale for USD 999,999.99.
In order to prevail, a complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the UDRP:
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.
As a preliminary procedural matter, the Panel noted that both Parties had submitted unsolicited supplemental filings. The Panel commented that the Complainant is not entitled to a “second bite of the apple” and that the Complainant could have easily foreseen the defences as raised by the Respondent. Having reviewed both Parties’ submissions, the Panel did not consider there to be circumstances warranting the admission of the Parties’ supplemental filings, and accordingly excluded them from the record.
Identity or confusing similarity
Under paragraph 4(a)(i) of the UDRP, the Panel found that the Complainant had established rights in the trade mark BECAUSE, and further found the disputed domain name to be identical to the Complainant’s trade mark.
Rights or legitimate interests
Noting that the Complaint would go on to fail under the third element, the Panel did not discuss the second element of the UDRP.
Bad faith
Under paragraph 4(a)(iii) of the UDRP, the Complainant had argued that the Respondent registered the disputed domain name with the intention of selling the disputed domain name to the Complainant for an amount greater than the Respondent’s costs directly related to the disputed domain name. The Respondent argued that the offering for sale of domain names consisting of dictionary terms was not in itself an illegitimate activity, and asserted that there was no evidence that the Respondent’s primary purpose in acquiring the disputed domain name was driven by the Complainant’s trade mark. The Panel accepted the Respondent’s assertion, finding that there was no evidence that the Respondent had sought to target the Complainant. The Panel stated that in light of the nature of the disputed domain name itself, consisting of a common dictionary term, the evidence on record did not support an inference that the Respondent had registered the disputed domain name with knowledge of the Complainant and its trade mark rights. Indeed, there was no evidence that the Complainant’s BECAUSE trade mark had amassed such fame to displace the dictionary word usage of the term “because” in the minds of the public. Accordingly, the Complaint failed under the third element of the UDRP.
Comment
Domain names serve as important brand assets. Where a domain name is not duly renewed, even where a brand owner has a corresponding trade mark, it may be impossible to recuperate a domain name that has lapsed and been re-registered, especially where the domain name concerned comprises a dictionary term. This case also highlights one of the safe harbours that the UDRP aims to provide for legitimate domain name registrants. Domain names composed of common dictionary terms may carry inherent value in light of their descriptive nature. While paragraph 4(b)(i) of the UDRP addresses scenarios involving attempts to sell a domain name for valuable consideration in excess of the out-of-pocket costs associated with acquiring the domain name, simply listing a domain name for sale is generally not, on its own, considered to amount to illegitimate activity. In order to prove bad faith under paragraph 4(b)(i) of the UDRP, Complainants must also demonstrate targeting of the relevant trade mark. Where there is no evidence that such domain names were registered in a clear effort to target a specific trade mark owner, UDRP panels will generally find that such domain names were not registered in bad faith.
The decision is available here.
