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

Launch of .LOCKER

Orange Domains, a joint venture between Trust Machines, Tucows and Hiro Systems, has recently launched the new generic Top Level Domain (gTLD) .LOCKER. 

.LOCKER is aimed at businesses offering digital locker services such as secure electronic file storage and personal storage solutions.  The .LOCKER offering is made up of two parts: a traditional Web 2 domain name and a Web 3 digital identity (reserved for the holder of the corresponding .LOCKER domain, but not compulsory to activate).

The .LOCKER new gTLD has no restrictions, meaning that anyone can apply for a domain name.  The launch schedule is as follows:

• Sunrise Period: from 19 June to 20 August 2024

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 .LOCKER.  Domain names will be allocated at the end of the Sunrise phase and, where multiple applications are received for the same domain name, an auction will take place.

• Pioneer Program: 28 August to 11 September 2024

This phase is dedicated for marketing purposes.  .LOCKER domain names will be allocated to joint venture partners, founders, early adopters, evangelists and influencers as determined by the Registry.

• Early Access Phase (EAP): 18 to 25 September 2024

During this period, available .LOCKER 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: from 25 September 2024 onwards

As from this date, anyone will be able to register available .LOCKER domain names on a first come, first served basis, at standard prices.

For more information on the launch of .LOCKER or to secure a .LOCKER domain name, please contact David Taylor or Jane Seager. 

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InternetNZ conducts conflicted names policy review

InternetNZ, the Registry responsible for New Zealand’s .NZ country code Top Level Domain (ccTLD), launched a review of its conflicted names policy in April of this year.  The purpose of the review is to try to break the deadlock on .NZ domain names that have been conflicted since the second level .NZ extension opened up in 2014.

The second level (2LD) .NZ extension was made available for registrations in 2014.  Whereas previously it had only been possible to register .NZ domain names at the third level (under extensions such as .CO.NZ, .NET.NZ and .ORG.NZ), registrants could now secure domain names directly under .NZ.  Existing registrants of third-level domain names had preferential eligibility to register the corresponding .NZ domain name until 30 March 2015; however, where the same name was held by more than one registrant at the third level, all the relevant registrants were encouraged to seek an agreement as to which registrant should be allowed to register the corresponding .NZ domain name.  In cases where the registrants of such names were not able to reach an agreement, the .NZ domain name in question became known as a “conflicted name” and remained in limbo. 

There were around 15,759 conflicted names at the start of the process, but this had dwindled to around 1,340 by March 2024.  InternetNZ has stated that around 40% of the remaining conflicts are between a single .CO.NZ and a single .NET.NZ domain names, but in some cases more registrants are involved, with about 17.5% of conflict sets involving three or more registrants and one seven-way conflict involving the holders of the same name in the .AC.NZ, .CO.NZ, .GEEK.NZ, .GEN.NZ, .MAORI.NZ, .ORG.NZ and .SCHOOL.NZ extensions.

In July 2020, a review of the .NZ rules was commissioned by InternetNZ and its Advisory Review Panel sought the community’s views pursuant to an Options Paper.  This Options Paper proposed three possible solutions to the conflicted names problem:

1. Maintain the status quo.
2. Provide a deadline for all registrants to come to an agreement, possibly supported by an optional mediation service. If a resolution could not be found within the deadline, all remaining conflicted 2LD’s would either be added to a prohibited names list, meaning that they could not be registered by anyone, or they would go to an auction managed by the Registry.
3. Development of criteria by InternetNZ for prioritising registrants’ right to the .NZ domain name.  Such criteria might involve the registrant with the longest held third level domain name having priority, or the registrant who holds the .CO.NZ domain name having priority, as “historically it is seen to be the most valuable of the 2LDs”. 

Then, in March 2022, the Domain Name Commission sent out over 2,200 invitations as part of the Online Dispute Resolution (ODR) pilot offering free “mediation and e-negotiation” to resolve conflicted domain names that had two parties involved and by March 2023 the remaining conflicted domain names had dropped by 11%, from 1,623 to 1,440. 

Under the current policy review, InternetNZ will be consulting with the remaining domain name holders in the conflict sets via a series of surveys to be sent out on Tuesday 4 June, Monday 1 July and Monday 5 August. 

It will be interesting to see if the Registry manages to build on the progress they have already made in relation to the remaining, particularly gnarly, batch of conflicted names over the next few months. 

Should you require assistance in relation to .NZ domain names, please contact David Taylor or Jane Seager.

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EURid publishes its 2024 Registrar Satisfaction Survey findings

EURid, the Registry responsible for running the .EU country code Top Level Domain (ccTLD), has recently published the findings from its 2024 Registrar Satisfaction Survey.

EURid stated that “understanding the views and perspectives of our registrars is crucial to us”.  With this in mind, the Registry undertook its biennial Registrar Satisfaction Survey at the beginning of 2024.  The survey gathered registrar feedback and EURid was pleased to report that 44% of the 241 registrars contacted participated in the 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.

In relation to the report, EURid asserted that it is continuously striving to enhance its Registry, as well as being committed to meeting the future needs of its registrars.

Should you be interested in registering a .EU domain name, please contact David Taylor or Jane Seager.

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Domain name recuperation news

Battle of the basketball tournaments

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, notably given the Respondent's long standing prior bona fide use of this mark.

The Complainant was Spokane Hoopfest Association, a Washington non-profit corporation which had organised and produced local 3-on-3 basketball tournaments in Spokane (Washington) under the mark HOOPFEST since it was formed in 1990. The Complainant owned a US federal trade mark for HOOPFEST, which was applied for in June 2020 and registered in January 2021. It was valid at the date of the decision (although subject to pending cancellation proceedings filed by a third party). The Complainant also created its website using the domain name spokanehoopfest.net in January 2000. 

The Respondent was the founder of Hoopfest Basketball, which first used the term HOOPFEST as the name for its basketball tournaments in 2009.

The Domain Name was hoopfestbaketball.com, which was registered by the Respondent in July 2020, about three weeks after the Complainant applied to register its US mark.  The associated website displayed the names of multiple basketball tournaments, such as "Thanksgiving Hoopfest", "Hoopfest in Paradise" and "Piney-Woods Hoopfest". Based on the "About Us" page, the Respondent's basketball tournaments were "one of the premier high school basketball events in the country", with events in Texas, Utah and the Bahamas. Internet users could buy merchandise and tickets to the events listed on this 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 contended that it had satisfied each requirement mentioned above while the Respondent denied all of the allegations in the Complaint.

For the purposes of the first limb, the Panel accepted that the Complainant had not only registered trade mark rights for HOOPFEST (the pending cancellation proceeding did not affect this finding), but also common law rights in this mark based on its long use (30 years) and significant media exposure.  The Panel noted that whether or when the Complainant's common law rights had expanded beyond the Spokane region was irrelevant when assessing confusing similarity under the first limb.  On that basis, the Panel held that the Domain Name was confusingly similar to the Complainant's mark, notably by incorporating this mark in its entirety.

Regarding the second limb, although the Respondent did not file a substantive response, based on the website associated with the Domain Name, the Panel noted that the Respondent began using the mark "Hoopfest" in 2009, and found that such 15-year use of "Hoopfest" was sufficient to prove that the Respondent's prior use of the Domain Name was bona fide.  This use also supported a finding that the Respondent was commonly known by this Domain Name.  In particular, the Panel underlined that the Respondent began using this mark in Texas, a state far from Spokane, Washington, more than ten years before the Complainant applied for its federal trade mark registration.  In the absence of any evidence substantiating that the Complainant's common law rights for HOOPFEST extended to Texas and that the Respondent had attempted to capitalise upon the Complainant's reputation, the Panel held that the Complainant had failed to make out a prima facie case that the Respondent lacked rights or legitimate interests in the Domain Name.  The second limb was therefore not satisfied.

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 the question of bad faith at the time of the registration of the Domain Name.  In the Panel’s view, the balance of the evidence did not support the Complainant's contention that the Respondent targeted its mark when registering the Domain Name.  By the time the Domain Name was registered in 2020, the Respondent had been using "Hoopfest" for ten years to promote basketball tournaments for highly competitive high school players, which were quite different from the Complainant's community festival featuring 3-on-3 contests open for a wide range of ages and talent levels.  It was therefore not apparent to the Panel that the Respondent would benefit from any confusion with the Complainant's trade mark.  Furthermore, the Complainant had not submitted any evidence regarding the Respondent's website that could be used to demonstrate the Respondent's efforts to impersonate or target the Complainant or its local basketball tournaments.  As a result, the Complainant failed to prove that the Domain Name was registered in bad faith and the Complaint was denied.

Comment

This case serves as a reminder of the complexities involved in domain name disputes and the critical importance of providing evidence that a respondent is targeting a brand owner in an attempt to profit from their reputation. 

The decision is available here.

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When business relationships exceed the scope of the 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 complaint in relation to the disputed domain name puntoblum.com because the Complainant failed to prove bad faith registration and use on the part of the Respondent.

The Complainant, Julius Blum GmbH, was a global leader in the manufacture and distribution of furniture fittings.  The Complainant held several trade mark registrations for the term BLUM, including a European Union trade mark and various other international registrations.  The Complainant also owned the domain name blum.com pointing to an active website.

The Respondent, Galimberti Ferramenta Snc, was an Italian company involved in the distribution of hardware and technical articles, including the Complainant’s products.

The disputed domain name was registered on 23 January 2014 and redirected to a website offering various products for sale, including the Complainant's products and those of its alleged competitors.

To be successful under the UDRP, a Complainant must satisfy the requirements of paragraph 4(a), 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.

The Complainant argued that it had never licensed or authorised the Respondent to use the BLUM trade mark.  Moreover, the Complainant asserted that the Respondent’s actions were intended to mislead consumers into believing that they were interacting with the Complainant or its official representatives.  According to the Complainant, the Respondent’s website, which sold furniture fittings and accessories, created a false impression of affiliation or endorsement by the Complainant.  Finally, the Complainant contended that the Respondent's domain name registration was a deliberate attempt to divert business and exploit the goodwill associated with the BLUM trade mark.

The Respondent countered by asserting that it was entitled to register and use the disputed domain name due to its long-term business relationship with the Complainant. The Respondent demonstrated that its use of the BLUM trade mark was communicated to and acknowledged by the Complainant’s representatives and its Italian distributor, who even awarded the Respondent a celebration plate in recognition of their collaboration.  The Respondent provided evidence of email correspondence and authorisation from the Complainant’s Italian distributor to use the Complainant’s trade mark on the Respondent’s website.  The Respondent therefore argued that its use of the disputed domain name was legitimate and in good faith. Furthermore, the Respondent underlined that the Complainant had never previously challenged the Respondent's use of the disputed domain name.

Regarding the first limb, the Panel found that the disputed domain name puntoblum.com was confusingly similar to the BLUM trade mark.  The addition of "punto", meaning "point" in Italian, did not prevent this finding.  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 did not consider that the circumstances were sufficiently clear to enable it to make a finding that the Respondent had registered and used the disputed domain name in bad faith under the UDRP.  The Respondent had demonstrated a long-standing business relationship with the Complainant, including authorisation from the Complainant's Italian distributor to use the BLUM trade mark.  The evidence provided by the Respondent, including email communications and the recognition award for collaboration with the Complainant, suggested that the Complainant was aware of and did not object to the Respondent's use of the disputed domain name.  The Panel found that the Complainant had not rebutted these arguments, and nor had it provided a clear explanation of the nature of its collaboration with the Respondent.  As a result, the Panel could not conclusively determine that the Respondent had registered and used the disputed domain name in bad faith.  Furthermore, the Panel noted that this situation appeared to fall outside the typical scope of the UDRP, which was designed to address clear cases of cybersquatting rather than complex business disputes, and may be more appropriately resolved through a court of competent jurisdiction or mediation. Consequently, the third element of the Policy was not established and the Complaint was denied.

Comment

This decision serves as a reminder that the UDRP was designed to address specific issues related to cybersquatting, and therefore more complex disputes, such as those between parties with current or prior business relationships, generally fall outside of its scope.  This point is clearly illustrated in the present decision, where the Panel underlined that it was not its role to assess whether the Respondent had infringed the Complainant’s trade marks or violated any agreement between the parties.  Therefore, although the UDRP might seem like a cheaper and faster option to recuperate a domain name, especially when compared to regular national court proceedings, it should be remembered that it is not suitable to resolve any and all types of disputes involving domain names. 

The decision is available here.

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Complainant not on cloud nine

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, a company based in Sweden, described itself as "a digitization company that contributes to developing welfare".

The Respondent was a Polish individual.

The disputed domain name, inera.cloud, was registered in December 2023.  At the time of filing of the complaint, it did not resolve to an active website.

The Respondent didn't submit a formal response, but contacted the WIPO Center multiple times.  The Respondent first expressed a desire to suspend the dispute, apologised, then stated that he was a minor, inquired about potential costs after the signature of the settlement agreement and finally indicated that the disputed domain name had been cancelled and was no longer visible in his account.

Although the proceedings were temporarily suspended for settlement negotiations between the Parties, it appeared that the Complainant later requested the reinstatement of the proceedings.  In addition, there was some ambiguity regarding the scope of the Respondent's consent to remedy and, as such, the Panel found it appropriate to proceed to a substantive decision based on merits. 

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements under paragraph 4(a) of the Policy: 

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 stated that it held two Swedish trade mark registrations for a stylised mark "INERA" and a word mark "INERA", as well as a trade mark registration with the European Intellectual Property Office.  The Complainant claimed to have held its INERA trade mark registrations since 2010.  The Panel noted that a summary of the Complainant's trade mark registrations was attached to the Complaint, but the actual trade mark registration certificates were not included in the record.  Additionally, the Panel underlined that the date when the Complainant had first used the INERA mark was not clear from the record.  Despite these shortcomings, the Panel (in accordance with established practice) checked the public register and concluded that Complainant had rights in the trade mark INERA and that the disputed domain name was identical or confusingly similar to the Complainant’s INERA mark.  As such, the Complainant satisfied the first limb.

The arguments of the Complainant under 4(a)(ii) were set aside by the Panel on the basis that it was not necessary to make a decision on this point, given its findings under 4(a)(iii).

Turning to the bad faith requirement, the Complainant simply argued that it had satisfied this element of the Policy.  The Panel, however, decided that the Complainant had failed to prove that the Respondent had registered and used the disputed domain name in bad faith.  The Panel found that the Complainant has not provided evidence that its Swedish trade mark, INERA, was well-known enough for the Respondent in Poland to have been aware of it when registering the disputed domain name.  The Panel further pointed out that although INERA is a coined term and thus an inherently distinctive trade mark, this distinctiveness alone did not establish its renown. Furthermore, the Panel underlined that the term INERA, being relatively short, was used by other parties as a trade mark and was desirable for domain names due to its brevity, regardless of any association with an existing trade mark.  Therefore, the Panel denied the complaint.

Comment

This decision serves as a reminder that providing evidence of a respondent's targeting of a complainant is crucial to succeed in the UDRP proceedings.  Contrary to regular court proceedings involving trade mark law in various jurisdictions, a complaint filed under the UDRP requires the complainant to demonstrate that the respondent was aware of the complainant.  This can be achieved for example by the submission of evidence regarding the complainant's actual products or services, the extent of their advertising and marketing, sales volumes or the recognition of the complainant's trade mark by the public.

The decision is available here.

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Authored by the Anchovy News team.

Anchovy News editorial team:

• Laëtitia Arrault
• Gabrielle Creppy
• Sean Kelly         
• Hortense Le Dosseur
• Ying Lou
• Cindy Mikul
• 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.