Newsletter sections:

• Domain name industry news
• Domain name recuperation news

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

Domain name industry news

New gTLDs lead domain growth in Q2 2024

The Domain Name Industry Brief (DNIB) recently released its Quarterly Report on global domain name growth for Q2 2024.  Concurrently, cyber intelligence outfit Whois XML API released its Q2 2024 Global Domain Activity Report (GDAR).  The two reports show some interesting trends. 

According to the DNIB Report, the total number of domain names worldwide increased to 334.6 million at the end of June 2024, which is an 8.2 million increase on the 326.4 million reported in the Q1 DNIB report.  Leading the charge were new generic Top Level Domains (gTLDs), which increased by 1.3 million over Q1 to reach a total of 34.6 million, representing 4% growth over the Q1 total and 23.2%, year over year.

In comparison, the .COM and .NET TLDs experienced a decrease of 1.8 million domain name registrations, or 1.1% compared to Q1 2024, to reach a combined total of 170.6 million at the end of Q2.  Further, .COM and .NET decreased by 3.8 million domain name registrations, or 2.2%, year over year.

Nevertheless, .COM needn’t fret too much as the GDAR concludes that, in Q2 2024, new .COM domain name registrations were significantly higher than in other individual gTLDs, with the TLD’s closest rival being .XYZ. 

The DNIB Report states that the total of other legacy gTLD domain name registrations, not including .COM and .NET (e.g. .INFO, .BIZ. .ORG, etc.), stood at 17.2 million at the end of the Q2 2024, which represents an increase of about 122,100 domain name registrations, or 0.7%, compared to Q1 2024.  These gTLDs increased by about 154,200 domain name registrations, or 0.9%, year over year.

The DNIB Report shows that total country-code Top Level Domain (ccTLD) domain name registrations reached 140 million at the end of Q2 2024, an increase of 0.4 million domain name registrations, or 0.3%, compared to Q1 2024.  These ccTLDs increased by 3 million domain name registrations, or 2.2%, year over year.

Interestingly, the GDAR states that, among the ccTLDs, in Q1 2024, .UK (United Kingdom) was the most popular extension for new domain name registrations, but that it was overtaken by .CN (China) in Q2.  The GDAR also reports high new domain registration numbers in Q2 in .DE (Germany), .RU (Russia), .US (U.S.), .CC (Cocos Islands), .FR (France), .BR (Brazil), .AU (Australia), and .CO (Colombia).

According to the DNIB Report, as of 30 June 2024, the top 10 gTLDs were .COM, .NET, .ORG, .XYZ, .INFO, .ONLINE, .SHOP, .TOP, .SITE and .STORE.  There  were 1,264 gTLD extensions delegated in the root zone with the top 10 gTLDs comprising 90.1% of all gTLD domain name registrations and 55.3% of all TLD registrations.  New gTLDs collectively accounted for 9.5% of all TLD registrations.

Additionally, the DNIB Report states that the 10 largest TLDs (of any type) by number of reported domain names were .COM, .CN (China), .DE (Germany), .NET, .ORG, .UK (United Kingdom), .RU (Russia), .NL (Netherlands), .BR (Brazil) and .AU (Australia).  The top 10 ccTLDs according to this criteria were .CN (China), .DE (Germany), .UK (United Kingdom), .RU (Russia), .NL (Netherlands), .BR (Brazil), .AU (Australia), .FR (France), .IN (India) and .EU (European Union).

For more information or to register domain names under any TLD, please contact David Taylor or Jane Seager. 

Back to the top.

EURid publishes Q2 2024 Quarterly Update

EURid, the Registry responsible for running the .EU country code Top Level Domain (ccTLD), has recently published its Quarterly Update for Q2 2024. The report highlights EURid’s quarterly achievements and strategic advancements.

These included its partnership with the “prominent global cybersecurity organization” Shadowserver Foundation in order to enhance its cybersecurity measures. EURid also highlighted the launch of EURidity, a system designed to improve data quality and ensure “registrar compliance with contractual obligations”. The EURidity system aims to prevent the registration of “problematic” domain names and in turn streamline the process of withdrawing any such domain names when necessary.  Moreover, EURid believes that the launch of EURidity continues to demonstrate its commitment to maintaining high standards in domain registration and management, as well as ensuring the “integrity and reliability of the .EU domain space”.

In June 2024, EURid also launched a new support platform in order to make it easier for stakeholders to find answers and submit requests.  EURid launched the platform with the further aim of providing a more “organized and efficient support experience”.  The platform provides answers concerning the registration of .EU domain names as well as general information.

EURid also highlighted the findings from its 2024 Registrar Satisfaction Survey.  EURid was encouraged to see that its general registrar services were given a rating of 9.3 out of 10 by respondents.  Its support services were also highly rated at 9.5 out of 10.  A particular point of pride for EURid was that 92% of respondents believe that the .EU namespace “evokes trust” and that 72% consider .EU to be the second-choice domain extension after their local ccTLD.

Lastly, at the end of Q2 2024, there were a total of 3,659,735 .EU registrations and 164,463 new domain registrations, with an “impressive” renewal rate of 83%.  All of which EURid highlights as evidence of its commitment to “service excellence and innovation in the domain registry industry”.

To visit EURid’s website, please click here.

For more information on .EU, .ею and .ευ domain names, please contact David Taylor or Jane Seager.

Back to the top.

Africa Domain Name Industry Study

The Internet Corporation for Assigned Names and Numbers (ICANN), in collaboration with PowerSoft Africa and the Coalition for Digital Africa, recently published a study on the state of the domain industry in Africa in 2023.  This study was timed strategically to coincide with the 80^th ICANN meeting held in Kigali, Rwanda.

To conduct this study, PowerSoft Africa and the Coalition for Digital Africa analysed a substantial amount of statistical material and conducted a survey of more than 200 managers of various companies and organisations in the Internet and domain name industry from all regions of Africa.  The last time a similar study was carried out was in 2016, and when comparing the data from the 2016 and 2023 studies, we can observe significant progress across the African countries.  

The African domain name space consists of 54 country code Top Level Domains (ccTLDs) (such as .ZA for South Africa, .TN for Tunisia), six Internationalised Domain Names (IDNs) (such as .الجزائر (for .Algeria), .مصر (for .Egypt), and three City TLDs (.CAPETOWN, .DURBAN and .JOBURG).  Since July 2017, Internet users can also register domain names under the new generic Top Level (gTLD) .AFRICA.

The study highlights that in November 2023, the total number of domain names registered under African ccTLDs was just over 4.33 million, which is twice as much as in 2016.  However, it should be noted that this significant difference is partly due to the fact that a few of these ccTLDs have often been used by malicious third parties for cybersquatting and other illicit activities such as .CF (Central African Republic) or .GQ (Equatorial Guinea). 

The study shows that the top 10 African ccTLDs by volume of domain names (led by .CO.ZA) have 92% of all registered African domain names and that Africans register domain names mainly “in countries where the local hosting industry and web development sector has developed sufficiently to create demand for local domains, i.e. mostly in South Africa, Egypt, Mauritius, Nigeria, Kenya, Zimbabwe, Uganda, Tunisia, and Morocco.”  In addition, approximately 1% of the domain names registered under the gTLDs are registered by Africans.  This represents 1.4 million domain names, the majority of which (approximately 1.2 million) are .COM domain names. 

In terms of access to the Internet, Africa still falls short of global values, with an average Internet penetration of 43% (29% in 2016) compared to a world average of 68% (50% in 2016).  The gap is even more extreme between African countries – as an example, the penetration rate for Eritrea is only 7% as opposed to 85% for Kenya.  This is explained by the lack of digital infrastructure in certain parts of Africa as well as high Internet access costs.  These figures are not surprising when considering that the average African would need to spend 4% of their monthly income to get as little as 1GB of Internet data per month.

Nonetheless, the number of African domain names has increased as infrastructure rollout has increased in many countries.  The authors of the study expect this trend to continue, projecting an average annual overall growth across the continent of 12.4%.

For more information or to register domain names under any TLD, please contact David Taylor or Jane Seager.

Back to the top.

Domain name recuperation news

Engineering a Loss: Descon UDRP Complaint Ends in Reverse Domain Name Hijacking

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 for the disputed domain name desconllc.com, finding that the Respondent had established rights and legitimate interests in respect of the disputed domain name, and entering a finding of Reverse Domain Name Hijacking.

The Complainant, Descon Engineering Limited, was an engineering and consultancy company established in Pakistan in 1977.  It was originally named Design Engineering Services and Construction Limited, changing to its current name in 1982.  "DESCON" was a coined term derived from "Design Engineering Services and Construction."  The Complainant operated internationally, including in the United Arab Emirates ("UAE"), Saudi Arabia, Kuwait, Qatar, Oman, Iraq, South Africa, and Kenya, employing over 20,000 people.  The Complainant held various trademark registrations for the DESCON mark, including Pakistan (Registration No. 73191, registered on 18 March 1980) and the UAE (Registration No. 162585, registered on 3 April 2012).  The Complainant also registered the domain name "descon.com" in September 1996.

The Respondent, an  individual, operated Descon Automation Control System LLC in Dubai, UAE.  The disputed domain name, registered on 7 February 2002, pointed to the Respondent's website, promoting services in system engineering, testing and maintenance services for automated control systems in industries such as water utilities and oil refineries.  The Respondent had been licensed under the name "Descon Automation Control System" since 22 March 1994, and had been operating in the UAE for over two decades.  The Respondent had documented interactions with the Complainant's UAE entities through purchase orders and emails dating back to 2009 and 2013.

On June 13, 2022, the Complainant issued a notice demanding the Respondent cease using the DESCON mark and transfer the disputed domain name.  A meeting between the parties failed to reach an agreement.

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 trademark 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.

Identity or confusing similarity

Under paragraph 4(a)(i) of the UDRP, the Panel found that the Complainant had established rights in the trademark DESCON, and further found the disputed domain name to be confusingly similar to the Complainant's trademark.

Rights or legitimate interests and Bad faith

The Panel combined its findings under paragraphs 4(a)(ii) and 4(a)(iii) of the UDRP, finding that the Respondent had demonstrated a legitimate interest in the disputed domain name by showing it had been using it in connection with a bona fide business since 1994, long before any dispute arose.  Moreover, the Respondent had been commonly known by the name "Descon" for over 30 years and had been licensed to operate in the UAE under this name since March 1994.  The Panel held that the Respondent's use of the domain name corresponded to its business name and activities, which were distinct from those of the Complainant, thus supporting a conclusion of legitimate interest.

The Panel found that the Complainant failed to provide sufficient evidence that the Respondent registered and used the disputed domain name in bad faith.  The Respondent registered the disputed domain name in 2002 for its existing business and had been using it legitimately for over two decades.  There was no conclusive evidence that the Respondent chose its business name to exploit the Complainant's trademark.  The Complainant's UAE trademark registration was only obtained in 2012, well after the Respondent had established its business.  The Respondent had legitimate, long-term use of the name "Descon" and conducted business with the Complainant's UAE entities without any issues regarding the name, indicating no intent to confuse or disrupt the Complainant's business.  The Panel concluded that the Complainant had not demonstrated that it was more likely than not that the Respondent set up its business in 1994 under the name "Descon" to exploit the Complainant's trademark. 

Reverse Domain Name Hijacking ("RDNH")

The Panel observed that the Complainant was aware of the Respondent's long-term legitimate use of the "Descon" name and the disputed domain name, as the Respondent had been operating under this name since 1994 and using the disputed domain name since 2002.  The Complainant failed to mention in the Complaint that its UAE entities had been customers of the Respondent and had corresponded with the Respondent using the disputed domain name, indicating awareness and acceptance of the Respondent's use of the name.  The Complainant did not provide sufficient evidence to support claims that the Respondent had targeted the Complainant's trademark when setting up its business or registering the disputed domain name.  The nearly 30-year delay before the Complainant challenged the Respondent's use of the name suggested that the Complaint was not a genuine case of cybersquatting but rather an attempt to harass the Respondent.  The Panel found that the Complaint was brought in bad faith and constituted an attempt at RDNH.

Comment

The decision underscores the importance of demonstrating (the absence of) bona fide use and legitimate interests in UDRP disputes.  It emphasises that prior establishment and ongoing legitimate business activities associated with a disputed domain name can outweigh claims based solely on trademark ownership. Furthermore, it highlights the significance of providing clear evidence to support allegations of bad faith registration and use of domain names, while also cautioning against bringing Complaints that may be perceived as attempts to misuse the UDRP.

The decision is available here.

Back to the top.

Geographic area and dictionary term raise the bar for bad faith under UDRP

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 romazzino.com.  The Panel noted that the issue of bad faith was finely balanced, but ultimately was not satisfied that the Respondent had registered the Domain Name in bad faith.

The Complainant, Sardegna resorts S.r.l., was the owner of a number of luxury hotels, including Hotel Romazzino, one of the most exclusive hotels in Sardinia designed in 1965.  It owned several domain names including romazzinohotel.com, which was registered on 28 May 2004.

The Complainant owned European Union and United Kingdom trade mark registrations for HOTEL ROMAZZINO, registered on 15 March 2010 and 25 June 2015 respectively.  The Complainant also claimed to be the owner of Italian trade mark registration for HOTEL ROMAZZINO, registered on 17 November 1992 in the name of a group company.

The disputed Domain Name was registered on 16 March 2005.  At the time of filing the Complaint, the disputed Domain Name resolved to an inactive web page, but previously resolved to a parking page with Pay-Per-Click (PPC) links to the websites of third parties, including the Complainant's competitors.

The Complainant argued that the Domain Name was confusingly similar to its HOTEL ROMAZZINO trade mark, that the Respondent did not enjoy any rights or legitimate interests in the Domain Name and that the Respondent registered and was using the Domain Name in bad faith.  The Complainant noted in particular that the HOTEL ROMAZZINO trade mark was so famous that it would be disingenuous for the Respondent to claim that it was unaware that the registration of the Domain Name would violate the Complainant's rights.  The Complainant also submitted that shortly after the registration of the Domain Name, it resolved to a web page that indicated that the Domain Name was for sale.

The Respondent did not submit a Response to the Complaint despite having been offered additional time to provide comments in English using a machine translation tool.  WIPO provided additional time in response to the Respondent's request for documentation of the proceedings in Korean, which was declined on the basis that the language of the Registration Agreement of the Domain Name was English.

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

i) The domain name registered by the respondent is identical or confusingly similar to a trademark 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 Panel found that the Complainant had uncontested rights in the trade mark HOTEL ROMAZZINO, owing to its trade mark registrations and as a result of the goodwill and reputation acquired through its use of the mark over a number of years.  The Panel found that the addition of the term "hotel" to the Complainant's trade mark did not prevent a finding of confusing similarity between the Domain Name and the Complainant's trade mark for the purposes of the first element of the UDRP.  As a result, the first element was satisfied. 

In relation to the second element, the Panel found that the Complainant had made out a prima facie case that the Respondent had no rights or legitimate interests in the Domain Name.  The Respondent had not used the Domain Name for a bona fide offering of goods or services, nor was the Respondent commonly known by the Domain Name.  While the Panel noted that "romazzinu" in the Gallurese dialect spoken in Sardinia translated to "rosemary" and that "Romazzino" was the name of the bay, beach and small surrounding region in Sardinia where the Complainant's hotel was located, it found that the Respondent had made no submission explaining or justifying its registration of the Domain Name.  As a result, the Panel found that the Complainant had established the second element of the UDRP.

The Panel found that the issue of bad faith was finely balanced.  The Panel noted that to find registration in bad faith, a panel should be satisfied either that a respondent had the complainant and its rights in a relevant trade mark in mind at the time of registration, or that the respondent should at least have been aware of the relevant trade mark.  In the present case, in support of a finding of registration in bad faith, the Panel noted that the Complainant's hotel had been established for many years, that the Respondent, based in Korea, did not adduce any evidence as to how or why it registered the Domain Name, and that the Respondent had a limited history of registering domain names comprising third-party well-known trade marks such as AUDI and VW.

However, the Panel noted that it was not satisfied that the Complainant had proven that the Respondent was more likely than not to have had the Complainant and its rights in the HOTEL ROMAZZINO trade mark in mind when it registered the Domain Name.  The Panel noted that Romazzino was a geographic area and dictionary term.  As a result, the bad faith registration requirement would have required a substantial fact‑based showing by the Complainant, which was not the case.

The Panel briefly addressed whether the Respondent's use of the Domain Name was in bad faith and found that ultimately the Respondent's use of the Domain Name to resolve to a parking page with PPC links was not in itself sufficient to satisfy the Complainant's overall burden.  Although the PPC links were likely to have been generated automatically, and prior Panels have found that respondents cannot disclaim responsibility for content appearing on the corresponding website, in the Panel’s view this activity alone was not enough.

Comment

This case shows the importance of adducing evidence of targeting in addition to relying on registered trade marks that are identical or confusingly similar to the domain name at issue.  This is particularly the case where the trade mark is a dictionary term and geographic area.  Although in this case the Complainant stated that its trade mark was famous and drew to the Panel's attention the

Respondent's prior history of registering domain names abusive of third-party trade marks, this was not sufficient to satisfy the Panel that a registrant in Korea was more likely than not to have had the Complainant and its trade mark rights in mind when it registered the Domain Name. 

The decision is available here.

Back to the top.

(On-)Ramp up the evidence

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (the UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of the Domain Name at issue, finding that the Complainant failed to prove bad faith registration.

The Complainant was Oris Holding AG, a Swiss watchmaker.  The Complainant held several trade mark registrations for ORIS, including a Japanese trade mark registered in 1986 and an international registration from 1964.

The Respondent was On-Ramp Internet Services, although the Complainant claimed for various reasons that an individual based in Japan had registered the Domain Name using a fictitious company name.

The disputed Domain Name was oris.com, registered on 7 August 1998.  The Complainant claimed that it had obtained the contact details of the reseller of the Domain Name and implied that the reseller was also the Respondent or connected to the Respondent.  The Complainant asserted that its representative had had a phone call with an individual from the reseller, followed up by an email asking him to transfer the Domain Name.  The individual in question replied that "On-Ramp Internet Services" was a made-up company name meant to match the acronym "ORIS" and that the Domain Name was locked and continued to be renewed.  The Complainant suggested that it could be allowed to expire, or alternatively the Complainant could file a Complaint under the UDRP, and requested that the individual contact the registrar.  The individual replied that he had tried gaining access to the relevant account years ago without success.  No further correspondence was provided in evidence.

At the time of the filing of the Complaint, the Domain Name resolved to an inactive webpage.

The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name.  The Respondent did not submit a Response.

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.

On the first requirement, the Panel agreed that the Domain Name was identical to the Complainant's ORIS trade mark, reproduced in its entirety, which satisfied the requirements of paragraph 4(a)(i) of the UDRP.

On the second requirement, the Panel made a brief finding that the Complainant had established a prima facie case that the Respondent lacked any rights or legitimate interests in the Domain Name, and this had not been rebutted by the Respondent.

Regarding the third element, however, the Panel found that the Complainant had failed to establish registration in bad faith.

In this regard, the Panel found that the Complainant had not provided evidence of its alleged reputation at the time of registration in Japan, where the Respondent was supposedly based.  The Panel also underlined that there was no other evidence provided to support the assertion that the Respondent wished to target the Complainant through the registration of the Domain Name.  Given this, the Panel pointed out that the Domain Name may have been registered solely for its presumably high value as a four-letter domain name under the gTLD ".com", rather than in reference to the Complainant.

In addition, the Panel also noted that the Complainant relied heavily on the various assertions of the individual that it entered into contact with about the Domain Name, despite being unable to evidence his ownership of the Domain Name and there being differing registrant details listed in the WhoIs record.  Given that the Complaint had been correctly notified, both to the Respondent via the information in the WhoIs and also to the individual that the Complainant had communicated with, the Panel observed that it was notable that no-one claiming to be the Respondent had come forward.

Comment

This decision illustrates the inherent difficulties of filing a complaint for recuperation of a domain name registered decades ago.  Under the UDRP, a complaint must prove both bad faith registration and use, and if a complainant is unable to evidence bad faith at the time of registration then the complaint must fail.  The decision also underlines that, in cases where complainants are simply unable to make contact with a registrant and establish a dialogue, the UDRP cannot be used to remedy the situation.  Panels will only make transfer orders when all three limbs of the UDRP are clearly met.

The decision is available here.

Back to the top.

Authored by the Anchovy News team.

Anchovy News editorial team:

• Laëtitia Arrault
• Gabrielle Creppy
• Sean Kelly         
• Ying Lou
• Cindy Mikul
• Eliza Parr
• Thomas Raudkivi
• Maria Rozylo
• Jane Seager
• David Taylor
• Tony Vitali

Anchovy® - Global Domain Name and Internet Governance

Hogan Lovells offers a unique, comprehensive and centralised Paris-based online brand protection service called Anchovy® for global domain name strategy, portfolio management and global enforcement.  We are the only law firm to be an ICANN-accredited registrar and we are accredited with a number of country-specific Registries worldwide. 

We also specialise in all aspects of ICANN’s 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, data protection and on a whole range of technology-related issues.

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