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Domain name industry news

On the .CASE

A few weeks after the introduction of nine new generic Top Level Domains (gTLDs) (see our March edition), another new gTLD is soon to be launched - .CASE.

The .CASE gTLD was acquired by the company Digity, LLC last year and is being launched as a general-purpose gTLD.

The .CASE Registry advertises it as being “perfect for law firms, attorneys and law practicing occupations”.  It will however eventually be opened to everyone after it enters general availability.

The launch schedule is as follows:

• Sunrise: 5 June – 5 July 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 .CASE.

• Legal Community Period: 5 July – 4 August 2023

Applicants wishing to register a .CASE domain name during this period will need to demonstrate that they are part of the legal community.

• General Availability: 4 August 2023 onwards

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

It should be noted that .CASE domain names will be sold at a high price ($2,000 for the Registry fee only), which may not be attractive to the general public.  However brand owners are advised to consider this new gTLD in order to protect their IP rights.

For more information on the launch of .CASE, please contact David Taylor or Jane Seager.

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Artful growth for .ART

UK Creative Ideas, the Registry for the .ART new generic Top Level Domain (gTLD), recently released its Q1 2023 Report, which documented growth across the board for the .ART Registry. 

In a recent blog, the Registry presented highlights from its .ART Q1 2023 Report, including a 27% increase in registrations over the Q1 2022 figure, bringing the total to 240,675 domain names under management, five years after the launch of .ART. 

The .ART Registry appears to have focused on the sale of Premium Names and, in Q1 2023, 1,276 Premium Names were sold, accounting for 5% of all .ART domain names registered and 70% of domain name registration revenue. 

The blog mentions that 15 .ART premium names were sold at the $5,000 or $10,000 price tiers, including pet.art, word.art, abstract.art and auctions.art, but also points out that the average price for a .ART Premium Name in Q1 2023 was $423, with the largest number (almost 40%) being sold in the $910 tier.  The Registry states that this demonstrates “the demand for both affordable and super-premium domains.”

The healthy growth rate for registrations was accompanied by a first-year renewal rate of 80%, with the flat rate renewal cost of $39 (regardless of the first year fee) no doubt contributing to this retention rate. 

In addition to its promotion of Premium Names, the .ART Registry also recently started offering its registrants the exclusive right to register names on the blockchain-based alt-root Ethereum Name Service (ENS) that exactly match their .ART names for a one-off fee.  As a result, registrants will be able use their .ART domains to address their cryptocurrency wallets.

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

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.AE increases in popularity

The Digital Government Regulatory Authority (TDRA), the body responsible for managing the country code Top-Level Domain (ccTLD) .AE in the United Arab Emirates, recently published an article in which they indicated that registrations under .AE had grown by around 46,000 domain names by the end of 2022, representing an increase of around 20% from the previous year.

With this 20% increase taking the total number of domain name registrations to over 300,000 during the first quarter 2023, the performance of .AE seems robust when compared to other more popular ccTLDs that have seen much lower performance levels.  For example, the Spanish ccTLD .ES (with currently 2.05 million registered domain names, which is nearly seven times as much as .AE) saw an increase of only about 2.3% between Q1 2022 and Q1 2023.  Taking into consideration the size of the population of the UAE (about 10.2 million), the 20% increase in registrations seems even more impressive (by way of comparison, Spain has around 47 million residents). 

The fact that the UAE has become one of the Middle East's most important economic centres and that there are no eligibility requirements for registering .AE domain names, makes it an attractive choice.  This is especially the case for businesses either with a local presence or those who regularly do business in the Middle East.

Should you require our assistance or you would like more information on .AE domain names, please contact David Taylor or Jane Seager.

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Domain name recuperation news

Sale of domain names can be a valid enterprise

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a three-member Panel denied the transfer of a domain name because the Complainant failed to demonstrate not only that the Respondent lacked rights or legitimate interests in the domain name, but also that it was registered and used in bad faith.

The Complainant was Foundations Worldwide, Inc., a company established in the United States of America, offering children’s products.  It was the owner of several trade marks including a United States trade mark in GAGGLE registered in 2013.

The Respondent was afterthought, Inc., also based in the United States of America, a company in the business of buying and selling domain names.

The disputed Domain Name was gaggle.com, first registered by a third party in 2001 and acquired by the Respondent on 19 September 2019.  According to evidence submitted in support of the Complaint, the Domain Name resolved to a parking page containing a link to inquire about the purchase of the Domain Name in conjunction with hyperlinks displaying pay-per-click (PPC) links.  The Respondent did not appear to have used the Domain Name in connection with an active website and did not have any business related to children’s products.

To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements set out at 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.

As far as the first limb was concerned, the Panel was satisfied that the Complainant had rights in the trade mark GAGGLE and that the Domain Name incorporated the Complainant’s trade mark in its entirety without any adornment.  The Panel therefore found that the Domain Name was identical to the Complainant's trade mark.  Thus the Complainant satisfied the first element set out in paragraph 4(a) of the UDRP.

Turning to the second limb and a respondent's rights or legitimate interests (or lack of them), according to section 2.1 of the WIPO Overview 3.0, a complainant must demonstrate that a respondent has no rights or legitimate interests in respect of the domain name in question.  In this regard, a complainant is normally required to make out a prima facie case, and it is then for the respondent to demonstrate otherwise.  If the respondent fails to do so, then the complainant is deemed to satisfy paragraph 4(a)(ii) of the UDRP.

In the present case, the Complainant put forward a prima facie case to the effect that the Respondent had no rights or legitimate interests in respect of the Domain Name as he had never made any use of the Domain Name nor registered any trade marks directly or indirectly related to the Domain Name.  The Complainant further claimed that the Respondent’s main interest in the Domain Name was to sell it for commercial gain.

The Respondent argued that it was not aware of the Complainant and its rights.  The Panel found in favour of the Respondent, citing Montane Ltd. v. Orion Global Assets (WIPO Case No. D2017-0309).  It considered that the Respondent had acquired the Domain Name for its value as a dictionary word and that there was no evidence on file that the Respondent had targeted the Complainant or its GAGGLE trade mark rights. 

The Panel noted that the sale of a domain name consisting of a common or a dictionary term could be a valid enterprise.  As stated in WIPO Overview 3.0, section 2.1:

"[…] panels have accepted that aggregating and holding domain names (usually for resale) consisting of acronyms, dictionary words, or common phrases can be bona fide and is not per se illegitimate under the UDRP."

For the Panel, offering a domain name for sale for a high price could be legitimate, provided that, as was the case here, the Respondent was not targeting the Complainant. 

Therefore, the Panel concluded that the Complainant had not established the requirements of paragraph 4(a)(ii) of the UDRP.  Given this finding, the Panel did not need to address the third limb, but nevertheless proceeded to do so.

The Complainant alleged that the Respondent’s only interest in the Domain Name was to sell it to the Complainant at the highest possible price and so the Domain Name had therefore been registered and used in bad faith.

Under the circumstances, the Panel found that the fact that the Respondent had offered the Domain Name for sale could not in itself be deemed to indicate that the Domain Name was registered, or was being used, in bad faith.  In the Panel’s opinion, the Respondent had not registered or used the Domain Name in bad faith because the Respondent had legitimately purchased the Domain Name as a dictionary term.  The evidence submitted did not show that the Respondent was targeting the Complainant or its GAGGLE trade mark rights.  The Panel was therefore convinced that the Respondent did not have knowledge of the Complainant or its GAGGLE trade mark when the Respondent acquired the Domain Name.

The Panel found in favour of the Respondent, considering that the Respondent had registered the Domain Name in good faith because the Respondent had credibly argued that he was not aware of the Complainant’s trade mark rights.  The fact that the Respondent was seeking a price for the disputed Domain Name in negotiations that was more than the Complainant was prepared to pay was equally not an indication of bad faith.  The Complaint was therefore denied.

Comment: This decision highlights the fact that trade mark holders will not necessarily be able to succeed in obtaining transfer of a domain name under the UDRP, even if it is identical to their trade mark rights.  Evidence of targeting is crucial, and this is particularly important when such trade marks are also dictionary terms.

The decision can be found here.

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Evidence of bad faith should not be cryptic

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel refused to transfer the disputed domain name kaddex.com.

The Complainants were five entities within a group of related companies, namely Kaddex, LLC, United States, Kaddex Pty Ltd, Australia, Kaddex OÜ, Estonia, Kaddex Ltd, United Kingdom, and KaddexDAO Association, Switzerland.  The Complainants, trading under the KADDEX mark, were involved in the cryptocurrency industry, specifically the operation of decentralised cryptocurrency exchanges ("DEX") and blockchain consulting.  The Complainants’ primary domain name, which resolved to its primary website, was kaddex.xyz, which the Complainants registered on 7 March 2022.  The Complainants owned trade mark registrations for KADDEX in numerous jurisdictions, the earliest filed on 14 October 2021, including a European Union trade mark registered on 11 March 2022.

The Respondent was Egnathia Golf Club Societa' dilettantistica A.R.L., Egnathia Golf Club of Italy.  It operated in the decentralised finance ("DeFi") industry and had used the KADDEX mark, and the Domain Name (registered on 14 April 2021), in relation to a DEX as early as June 2021.

At the time of the UDRP decision, the Domain Name resolved to a website for "eckoDAO", ostensibly a community led DeFi ecosystem hosted on the Kadena blockchain.

On 21 February 2023, the Complainants initiated proceedings under the UDRP for a transfer of ownership of the Domain Name.   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.

Under the first limb of paragraph 4(a), the Panel considered that the Complainants had registered trade mark rights identical to the Domain Name.  As such, irrespective of whether such rights accrued after registration of the Domain Name, the Panel concluded that paragraph 4(a)(i) was met.

With regard to paragraph 4(a)(ii), the Respondent argued that it had used the Domain Name for a legitimate and widely used DEX ever since it registered the Domain Name. However, the Panel did not find it necessary to address the question of the Respondent's rights and legitimate interests because it concluded that the Complaint had not succeeded in proving bad faith under paragraph 4(a)(iii).

With regard to bad faith under paragraph 4(a)(iii), the Complainants indicated that they had used the KADDEX mark in the cryptocurrency industry since 2019 via a predecessor organisation.  In a supplemental filing, the Complainants stated that that their founder and beneficial owner had been using the name Kaddex as a sole trader since 2019.

The Complainants further claimed that in January 2021 their founder had discussed his plans to launch a DEX built on the Kadena blockchain publicly in his Telegram channel and privately over Telegram messages with an employee of the Kadena blockchain.  In March 2021 the employee had publicly announced that an independent team had approached Kadena asking to launch a DEX on Kadena by forking the existing code and calling it KADDEX, which Kadena had consented to.  The Complainants added that subsequent investigations by third party journalists had revealed that the same employee was behind the "independent team" mentioned in his public announcement.  The Complainants asserted that the employee, via an Italian golf club connected with his family (the Respondent), had registered the Domain Name and used it together with the Complainants’ logo, designs, and business ideas to start a DEX business that competed directly with the Complainants under an identical trade mark (KADDEX) thus piggybacking off the Complainants' goodwill and ideas and thereby evidencing bad faith registration and use of the Domain Name.  The Complainants concluded that (i) the fact that the Respondent was a golf club, with no apparent connections to the cryptocurrency industry, was a further indication of bad faith and (ii) the Respondent had engaged in a campaign of trade mark "trolling", by applying to register the KADDEX trade mark in the United States, registering the Complainants’ logo in the European Union, and filing extensions of time to oppose the Complainants’ United States trade mark application, thereby delaying its registration.

The Respondent argued that the Complainants had not presented any evidence substantiating their claim to have used the KADDEX mark since 2019, that the Complainants’ companies did not actually exist at the time of registration of the Domain Name and that the Domain Name had been registered six months before the Complainants filed their first trade mark application.  The Respondent added that the Complainants’ domain name, kaddex.xyz, was registered long after registration of the Domain Name.

The Respondent also asserted that it had registered the Domain Name for and on behalf of KADDEX US Holdings Inc. to be used and operated for the Kaddex DEX business immediately following the registration of the Domain Name. The Respondent presented evidence of an assignment of the Domain Name, dated March 2023, but effective from the registration date of the Domain Name, to "KADDEXDAO", the operator of the Respondent's DEX.  The Respondent added that, in February 2023, it applied to register figurative trade marks comprising its logos in the European Union, and that the Complainants had reproduced such logos identically, without the Respondent's consent, on their website at the domain name kaddex.xyz.  The Respondent justified its rebranding to eckoDAO by the fact that its Kaddex business had outgrown the name Kaddex and had evolved into a comprehensive DeFi ecosystem, not just a DEX.

Finally, the Respondent declared that the Complainants were not active or known in the field they claimed to be active in and the content accessible at the website associated with kaddex.xyz was a clone website of the Respondent's previous website under the Domain Name and reproduced a logo designed by the Respondent (which was the subject of the Respondent's trade mark applications).

The Panel noted that the Domain Name was registered six months before the Complainants had applied to register their first trade mark and registered their earliest company, Kaddex, LLC, and almost a year before the Complainants registered their own domain name, kaddex.xyz.  The Panel thus found that it was clear that the Complainants did not exist and had not applied to register the KADDEX trade mark at the time that the Domain Name was registered. 

As regards the Complainants’ predecessor organisation referred to in the Complaint, the Panel noted that such organisation had not been identified by the Complainants and that the only evidence provided in support of the claim to have used the mark since 2019 was the specimens of use filed with the United States Patent and Trademarks Office in support of the Complainants' claimed first use in commerce date (15 May 2019) for their United States trade mark application.  These specimens consisted of brochures and marketing material for a KADDEX DEX, as well as a single quotation dated 1 July 2019, purportedly issued by "Kaddex LLC, d/b/a Kaddex", for blockchain and cryptocurrency consulting services to be rendered to a party whose name had been redacted.  The Panel noted that the brochures and marketing materials were undated and the quotation was issued by a company that was only registered over two years later, according to the Complainants' own evidence.  Therefore the Panel found that neither supported the Complainants’ claim to have used the mark since 2019. 

With respect to the Complainants’ supplemental statement that their founder had been using the name Kaddex as a sole trader since 2019, the Panel held that such a statement contradicted both the Complainants’ initial statement that a predecessor organisation, as opposed to an individual, had used the mark since 2019, and the quotation tendered as evidence of use since 2019, which was issued in the name of a company and not an individual. 

The Panel added that, even if the single quotation had been taken as evidencing at least some use by the Complainants of the mark in 2019, no evidence was provided as to how the private use of the mark for consulting services could have come to the Respondent's attention.  The Google search independently conducted by the Panel for all results featuring the word "kaddex" from 1 January 2019 until 14 April 2021, the registration date of the Domain Name, showed no convincing results indicating that the KADDEX mark was in use, at least publicly on the internet over that period.  The Panel thus concluded that there was no convincing evidence in the record substantiating the Complainants’ claims to have used the KADDEX mark since 2019.

With regard to the Complainants’ allegation that their founder had divulged his plans to the Respondent via an employee of the Kadena blockchain, the Panel stated that it had found no evidence substantiating this claim, or indeed any public disclosure. The Panel considered that if the Complainants had indeed used the KADDEX mark since 2019, given how central that claim was to the bad faith element and the Complainants' case as a whole, one would have expected the Complainants to tender far more actual evidence than a single quotation (which was in any event problematic).

Whilst the Panel found that the Complainants’ statements were unsubstantiated, it found that there was unrefuted Internet archive evidence showing that the Respondent had used the Domain Name from June 2021 in relation to a DEX under the KADDEX mark, predating any proven use by the Complainants of the KADDEX mark.  As a consequence, the Panel found that the claim had failed on the third element and the Complaint was denied.

With regard to Reverse Domain Name Hijacking ("RDNH"), the Respondent requested a finding of RDNH, claiming that the Complainants knew that they could not succeed given their clear knowledge of the Respondent's rights and legitimate Interests and the absence of bad faith on the part of the Respondent, as well the Complainants’ unsubstantiated claims, including use of the KADDEX mark since 2019.

However, the Panel declined to find RDNH, pointing out that the Complainants were not represented and consequently were held to a lower standard than represented Complainants.  The Panel also noted that the Complainants did own numerous trade marks and company registrations for the KADDEX mark around the world, and the Complainants appeared to have used the KADDEX mark for an actual cryptocurrency offering.  The Panel concluded that, on balance of probabilities, the Complainants had failed to fully understand the bad faith requirements of the UDRP, rather than deliberately set out to act in bad faith in filing the Complaint. 

Finally, the Panel indicated that the evidence seemed to establish some targeting between the parties, but it was unclear who the targeting party was.  In the absence of evidence of bad faith available in documentary form (the Complainants themselves admitted that “this proceeding comes down to a he-said-she-said”), the Panel concluded that the dispute between the parties would appear better suited to resolution by a trial court of competent jurisdiction, with the benefit of discovery and cross-examination. 

The decision is available here.

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Two "tickets" to UDRP denial

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 Names ticketsms.com and ticketsms.net.  The decision was on the basis that the Complainants had failed to show that the Respondent had registered the Domain Names in bad faith.  The Panel also entered a finding that the Complainants had engaged in Reverse Domain Name Hijacking.

The First Complainant was TicketSms s.r.l., an Italian company established in 2017 operating a digital ticketing system for event organizers.  The Second Complainant was the founder and legal representative of the First Complainant (collectively referred to as the "Complainants").

The Complainants owned two trade mark registrations for the term TICKETSMS, both registered in November 2020.  They also registered the domain name ticketsms.it in February 2015.

The Respondent was an individual based in the United Kingdom who owned a UK trade mark TICKET SMS SIMPLE MANAGED SOLUTION, registered in October 2015.  He was also the owner of the domain name ticketsms.co.uk, registered in May 2011.

The Respondent registered the disputed Domain Names in June 2009.  On 9 October 2014, the disputed Domain Name ticketsms.com redirected to the website at the domain name clickit4tickets.co.uk, which also belonged to the Respondent.  At the time of the UDRP Complaint, the disputed Domain Names were resolving to parking pages.

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 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 Complainants argued that, even though the Domain Names were registered in 2009, several years before the beginning of the Complainants' business activity and trade mark registrations, the Respondent had never actively used them and his purpose had always been the sale of the Domain Names for profit.  The Complainants further underlined that the Respondent had tried to sell them the Domain Names multiple times.

The Respondent stated that he had registered the Domain Names in June 2009 in connection with his mobile ticketing technology projects.  Back then, he also registered many other "ticket" related domain names with the same purpose.  He claimed that, in July 2015, he was receptive to the Complainants’ enquiry about the purchase of the Domain Name ticketsms.com because by then he had decided to abandon his various online ticketing projects.  He further stated that the redirection of the Domain Name ticketsms.com to the website at his other domain name was evidence of usage of the Domain Name.  Finally, he pointed out that he could not have registered the disputed Domain Names by reference to the Complainants because their trade mark rights and business did not exist before 2015.

As far as the first limb was concerned, the Panel accepted that the Complainants had trade mark rights in the TICKETSMS mark and that the Domain Names included the trade mark in its entirety without any additional elements.  They were therefore identical to the trade mark in which the Complainants 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 Complainants had not satisfied the third limb as they had failed to prove that the Respondent had registered the Domain Names in bad faith.  The Panel noted that the Second Complainant had started business activities under the TICKETSMS trade mark in 2015, the First Complainant was founded in 2017, and the TICKETSMS trade mark was registered in 2020, while the Domain Names were registered in 2009.  Therefore, the Panel stated that the Complainants had failed to show how the registration of the Domain Names could have been made in bad faith under these circumstances.  The Panel underlined that, since the Complainants' business and trade marks came into being several years after the registration of the Domain Names, it was implausible to assert that the Respondent had anticipated this and targeted them when registering the Domain Names.

The Panel thus found that the Complainants had failed to establish that the Respondent had registered the Domain Names in bad faith.  As both registration and use in bad faith are necessary to establish the third limb under paragraph 4(a) of the UDRP and the Complainants had failed to prove registration in bad faith, the Panel did not consider it necessary to address the issue of use in bad faith.  The Panel therefore denied the complaint and entered a finding that the Complainants had engaged in Reverse Domain Name Hijacking.

Comment: This decision highlights once again that trade mark owners should think very carefully about filing a UDRP complaint when the domain name at issue was registered before their trade mark.  As explained in the WIPO Overview 3.0, in such circumstances panels will not normally find bad faith on the part of a respondent.  There are exceptions to this, but 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.  Such scenarios include registration of a domain name shortly before or after announcement of a corporate merger, or further to a respondent’s insider knowledge or significant media attention.

The decision is available here.

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Authored by the Anchovy News team.

Anchovy News editorial team:

• Laëtitia Arrault
• Lanlan Bian
• Gabrielle Creppy
• Sean Kelly         
• Hortense Le Dosseur
• Ying Lou
• Cindy Mikul
• Eliza Parr
• Thomas Raudkivi
• Maria Rozylo
• Jane Seager
• Aissatou Sylla   
• 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.