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 .GIVING

Public Interest Registry (PIR), the not-for-profit organisation that manages, among others, the generic Top Level Domain (gTLD) .ORG, has recently launched the new gTLD .GIVING.

PIR acquired .GIVING in December last year from Giving Limited (itself acquired by cloud software company Blackbaud), which operated the online social giving platform JustGiving.  The new gTLD acquisition was not that surprising as PIR describes itself as the “leading provider of mission-driven domains”, with a portfolio comprising the new gTLDs .NGO and .ONG, as well as CHARITY, .FOUNDATION, and .GIVES.

The launch of .GIVING is taking place according to the following schedule:

• Sunrise: from 13 October 2022 to 13 December 2022

During this period, trade mark holders who have registered their trade marks at the Trade Mark ClearingHouse (TMCH) will be able to apply for the corresponding domain names under .GIVING.

• Landrush: from 20 December 2022 to 20 January 2023

During the Landrush phase, available .GIVING domain names can be registered by anyone on a first come, first served basis, on the condition that applicants warrant that they are either current users of Backbaud’s solutions, or that they will try out the free Giving Checkout solution offered by JustGiving.

• General Availability: from 20 January 2023 onwards

As from this date, anyone will be able to register available .GIVING domain names on a first come, first served basis, with no conditions.

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

Back to the top.

Turkey introduces TRABIS

On 5 May 2019, the responsibility for managing the country code Top Level Domain (ccTLD) .TR (Turkey) was transferred from the Middle East Technical University (METU) to the Information Technologies and Communications Authority (BTK), which began working on the development of a new platform for managing .TR domain names.  On 14 September 2022, this new management system platform, called TRABIS, was finally introduced.

The new TRABIS management platform is not accessible to end users for the management of .TR domain names, instead it is necessary to go via an accredited .TR registrar.

The most important change implemented by the introduction of the TRABIS platform is that it is no longer necessary to submit documentation proving the applicant’s eligibility in order to apply for domain names under the following second-level extensions: .COM.TR, .NET.TR and .ORG.TR. These extensions are now unrestricted and applications are treated on a first come, first served basis. 

The other second-level extensions which previously did not require any documentation such as .GEN.TR, .WEB.TR, INFO.TR or TV.TR continue to be unrestricted.

Finally, for the more specific second-level extensions (for example, extensions related to the government or educational establishments), such as .GOV.TR, .POL.TR or .EDU.TR, applications continue to require supporting documentation.

The other significant change is the introduction of a new alternative dispute resolution mechanism for .TR domain names, and it will be interesting to see the decisions coming through in due course.

Should you require assistance for the registration or recuperation of domain names under .TR, please contact David Taylor or Jane Seager.

Back to the top.

Five million domain names registered under .BR

NIC.br, the Registry responsible for running the .BR country code Top Level Domain (ccTLD), recently announced that registrations under .BR have passed the five million mark.

The primary .COM.BR extension accounts for over 4,680,000 of the registered domain names, while the remainder are spread across the other Brazilian extensions such as .NET.BR with about 78,000 and .APP.BR with about 15,170 domain names.  In addition, there are numerous other Brazilian extensions covering various sectors and categories, such as .ABC.BR (for cities) and .BLOG.BR (for individuals), which account for about 360 and 6,570 registered domain names, respectively. 

According to Verisign's Q2 2022 Domain Name Industry Brief, .BR is the world's 6th largest ccTLD in terms of the number of registered domains, behind .CN (China) with 20.6 million domain names, .DE (Germany) with 17.3 million domain names, .UK (United Kingdom) with 11.1 million domain names, .NL (The Netherlands) with 6.3 million domain names and .RU (Russia) with 5.7 million domain names.

As well as surpassing five million domain name registrations, NIC.br also highlighted the fact that more than 1.5 million .BR domain names have been registered and protected by DNSSEC (Domain Name System Security Extension).  DNSSEC was designed and implemented as a response to the inherent security vulnerabilities in the way that the Domain Name System operates.  Due to these inherent vulnerabilities, it is possible to divert internet users away from their intended website destinations and to redirect them to third-party websites without their knowledge.  This can result in the dissemination of computer viruses, malware and even the theft of sensitive financial and personal data.  DNSSEC seeks to mitigate this situation by introducing additional security at the level of the domain name servers, which ensures that Internet users are alerted to any possible re-direction to a third-party website that is not their intended destination.

Domain registrations under .BR are available only to locally-based individuals and legal entities "legally represented or established in Brazil with regular registration with the Ministry of Finance".

Should you require assistance with registering domain names in Brazil, please contact David Taylor or Jane Seager.

Back to the top.
 

Domain name recuperation news

Mambo Beach mall loses battle over Mambo Beach

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 the transfer of the Domain Name mambo-beach.info, partly on the basis that the Complainant failed to prove the Respondent’s lack of rights and legitimate interests, given that the Domain Name reflected a geographic term.

The Complainant was Cordelco N.V., based in Curaçao.  The Complainant exploited a mall named “Mambo Beach”.  The mall was located in the area of Seaquarium beach, commonly known as Mambo Beach, in the South-west of Curaçao.  The Respondent was an individual based in the Netherlands.  

The Domain Name was mambo-beach.info, registered on 27 October 2015.  It was used to point to a website providing information about Mambo Beach and the surrounding facilities such as hotels, beach clubs and restaurants.

To be successful in a complaint under the UDRP, a Complainant must satisfy the requirements of paragraph 4(a) of the UDRP, namely that:

(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 disputed domain name has been registered and is being used in bad faith.

Regarding the first element, the Complainant contended that the Domain Name was identical to its MAMBO BEACH trade mark registration, filed on 15 November 2002 and renewed on 1 July 2022.  The Respondent disputed the Complainant’s ownership of the trade mark on the basis that a copy of the deed of transfer to the Complainant had not been submitted and that the trade mark register of the Curacao Bureau for intellectual property was not publicly accessible.  The Panel accepted the Complainant’s supplemental submission of the certificate of trade mark renewal from the Curacao Bureau for intellectual property, as it would have otherwise issued a Panel Order requesting the ownership details of the trade mark at issue.  As a result the Panel was satisfied that the Complainant was the owner of the trade mark and found that the Domain Name was confusingly similar to it.  The first element was therefore satisfied.

With regard to the second element, the Complainant asserted that the Respondent had not used the Domain Name in connection with a bona fide offering of goods and services.  The Complainant added that the Respondent was not commonly known by the Domain Name.  According to the Complainant, the Domain Name falsely suggested affiliation with the Complainant because the Respondent’s website provided information about the facilities in the same area as the Mambo Beach mall.  Furthermore, it was due to the reputation of the Mambo Beach mall and the widespread publicity and efforts of the Complainant that the actual area of Seaquarium Beach had become known as Mambo Beach.  As such, the Complainant claimed that the Respondent had no rights or legitimate interests in the Domain Name.

The Respondent refuted these arguments by stating that Mambo Beach was the popular and locally known name of Seaquarium Beach and came from the name of the popular beach club “Mambo” that was located on the beach until 2012.  Moreover, the Respondent underlined that the beach was also called “Mambo Beach” on Google Maps and in a Lonely Planet guide, both of which clearly referred to the beach and not to the Complainant’s mall.  The Respondent claimed that it had used the Domain Name in connection with a bona fide offering of services by informing tourists about the facilities in close proximity to Mambo Beach.

The Panel found that Mambo Beach had become a geographical term and it was irrelevant whether that term originated in the presence of the popular Mambo Beach Club, or in the presence of the Complainant’s Mambo Beach mall.  In the Panel’s opinion, if a domain name consisting of a geographical area resolved to a website providing information about that geographical area, as in the present case, this constituted the very kind of bona fide offering which was sufficient to establish legitimate interests under the Policy.  Moreover, nothing on the Respondent’s website would mislead Internet users into believing that it was the official site of the Complainant’s mall or had any affiliation with such mall, the Complainant or its trade mark.  Under these circumstances, the Complainant had failed to show that the Respondent lacked a legitimate interest in the Domain Name.  Therefore, the Panel found that the Complainant had failed to meet the second element.

Given its findings under the second element, the Panel considered that it was unnecessary to extensively analyse the issue of bad faith under the third element.  Briefly, the Panel noted that the Respondent’s use of the Domain Name did not suggest an affiliation with the Complainant or its trade mark, nor did it create a likelihood of confusion with the Complainant’s mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website.  Therefore, the Panel found that the Complainant had failed to establish bad faith registration and use under the third element and the Complaint was denied.

The decision is available here.

Back to the top.

UDRP not in service for complex legal issues

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 Domain Names servicelistregistry.com, servicelistregistry.net, servicelistregistry.org and servicelistregistry.tv, considering that the complex issues at hand were unsuitable to be decided under the UDRP.

The first Complainant was Service List Registry Limited, a company based in the United Kingdom, operating in the television and broadcasting sector.  The second Complainant was an individual, sole trader at an independent consultancy operating in the television and media sector and sole director of the first Complainant.  The Respondent was also an individual, sole director of Peckham Data Centre Limited, a company based in the United Kingdom, and initially incorporated as Service List Registry Project Limited. 

The second Complainant and the Respondent began their business relationship before the incorporation of the first Complainant and Peckham Data Centre Limited in 2022.  In 2021 they worked together on a response to an RFP issued by the DVB Project to develop a DVB-I Central Service List Registry.  As part of their response, the Respondent offered to register the Domain Names, and then did so listing his personal email address and "Peckham Data Centre Limited" (although the company was not incorporated until later, in June 2022).  The response to the RFP was submitted in July 2021, with the second Complainant identified as the project director and the Respondent as the technical architect.

In April 2022, the first Complainant was incorporated and the Respondent noted that he would update the contact details for the Domain Names.  However, the parties’ relationship subsequently broke down and the Respondent decided that he no longer wished to participate in the project.  When the second Complainant provided the information for transfer of the Domain Names, the Respondent requested to be compensated for work done.  The second Complainant offered to cover certain costs (including registration of the Domain Names), but the Respondent refused and indicated that the second Complainant could purchase the Domain Names for GBP 5,000.  The Respondent then modified the website that servicelistregistry.org pointed to so that it read “Dude, where’s my content?”.

The Complainants initiated proceedings under the UDRP for a transfer of ownership of the Domain Names.  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 element of paragraph 4(a) of the UDRP, the first Complainant claimed to own an unregistered trade mark for SERVICE LIST REGISTRY which had been used on the homepage of the Complainants’ website since 2021.  The Respondent disputed this, noting that they were common words.

Under the second element of paragraph 4(a) of the UDRP, the Complainants argued that the Respondent registered the Domain Names for the purposes of the project in accordance with their agreement, and therefore then breached that agreement by using his personal details.  The Respondent denied the existence of any implied agreement in this regard.

Under the third element of paragraph 4(a) of the UDRP, the Complainants contended, amongst other things, that the Respondent’s offer to sell the Domain Names was in bad faith.  The Respondent retorted that neither the first Complainant nor any trade marks existed when the Domain Names were registered, and stated that he no longer wished to sell the Domain Names due to the Complainants’ conduct.

Setting aside the arguments of the parties, albeit after a lengthy description of their numerous submissions, the Panel found that the UDRP was not a suitable procedure to resolve such a dispute.  The Panel explained that in order to determine whether the Respondent had rights or legitimate interests in the Domain Names, or whether he had registered and used the Domain Names in bad faith, the nature of the relationship between the parties, and any previous agreements or trust arrangements between them, had to be closely examined.  The Panel underlined that such determination was unavailable under the UDRP, given the lack of means traditionally available to the courts, such as cross-examination or discovery orders, among other things.

Comment

This decision serves as a reminder of a fundamental notion regarding alternative domain name dispute resolution proceedings: they were originally designed to tackle clear-cut cybersquatting cases.  Complex issues involving a prior business relationship and requiring a determination on the existence of a binding agreement, as in the present case, are not suitable for a ruling under the UDRP, which is a written submissions-only procedure.

Beyond domain dispute proceedings, this case also illustrates the difficulties surrounding domain name ownership in the context of a joint venture.  Ideally, a domain name created for the purpose of a joint venture should be registered from its inception by the entity which will be used to carry on the joint venture.  If this is impossible, then it would be preferable to draft a clear and unambiguous agreement concerning the registration as well as the potential transfer of any domain name to the relevant entity in order to avoid future disputes surrounding ownership of the domain name.

The decision is available here.

Back to the top.

Complainant wastes time on "anti-waste" domain name

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of the Domain Name antigaspi.co, finding that the term "ANTI-GASPI" (being an abbreviation of "ANTI-GASPILLAGE" meaning "anti-waste" in French), was a descriptive term that described the business of both the Complainant and the Respondent.  While the Panel found that the Complainant had unregistered trade mark rights for "NOUS ANTI-GASPI", these unregistered rights did not confer upon it exclusive rights in the term "ANTI-GASPI" alone.  In the absence of the dominant parts of the Complainant's trade mark in the disputed domain name, the Panel found that the Complainant's case failed under the second and third limbs of the UDRP as a result.

The Complainant was Nous Epiceries Anti-Gaspi, a French company operating a chain of grocery stores under the name "NOUS ANTI-GASPI".  It was in the business of providing products that are not usually available via traditional distribution channels, such as perishable products that are close to their use-by date and fruit and vegetables that are an irregular size or shape.

The Complainant owned a semi-figurative French trade mark for NOUS EPICERIES ANTI-GASPI, assigned to it in 2018, and a French figurative trade mark for LA TABLE ANTI-GASPI, registered on 13 April 2021.

The Respondent was Jonathan Negrin, of 365 Good, a French company.

The Respondent registered the Domain Name antigaspi.co (the Disputed Domain Name) on 22 February 2022.  The Respondent was using the Disputed Domain Name to offer an identical business to the Complainant, namely an online grocery service fighting against food waste.

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

(i) The domain name registered by the respondent is identical, or confusingly similar, to a 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 Complainant argued that:

1. In addition to its registered trade marks for "NOUS EPICERIES ANTI-GASPI" and "LA TABLE ANTI-GASPI", it was the owner of unregistered trade mark rights in "NOUS ANTI-GASPI", as it was conducting its business via its website at its registered domain name nousantigaspi.com and the packaging on its products bore this trade name .
2. The Disputed Domain Name was confusingly similar to its registered and unregistered trade marks.
3. The Respondent had no rights or legitimate interests in the Disputed Domain Name.
4. By registering the Disputed Domain Name, the Respondent intended to take advantage of the Complainant's activities rather than using the term "anti-gaspi" in the descriptive sense, and, given the direct competition between the Complainant and the Respondent, registered and was using the Disputed Domain Name in bad faith.

The Respondent did not respond to the Complaint.

In relation to the first limb, the Panel accepted that the Complainant owned registered trade marks for NOUS EPICERIES ANTI-GASPI and LA TABLE ANTI-GASPI.  The Panel also accepted that the evidence provided was sufficient to establish that the Complainant enjoyed unregistered trade mark rights in the trade name "NOUS ANTI-GASPI", which may form the basis of a UDRP claim and meet the test of paragraph 4(a)(i) of the UDRP.

The Panel noted that the Disputed Domain Name, comprising the term "anti-gaspi" without a hyphen, under the extension ".co", formed part of the Complainant's trademarks, namely the term "ANTI GASPI", and therefore the Complainant's trade marks and the Disputed Domain Name could be said to be similar.

However, the Panel reserved judgement on the question of whether there was a risk of confusion between the Disputed Domain Name and the Complainant's trade marks, given their descriptive nature in relation to the parties’ activities, pending its analysis of the second and third elements of the UDRP.

In relation to the second limb, the Panel found that the term "ANTI-GASPI", reflecting the Disputed Domain Name, was a descriptive term for actions that aimed to combat or reduce waste, in particular food waste.  The Panel also noted that the website to which the Disputed Domain Name resolved was an e-commerce site dedicated to the fight against food waste.  As a result of the descriptive nature of the term "ANTI-GASPI", the Panel found that the Complainant had failed to demonstrate that the Respondent had no rights or legitimate interests in the disputed Domain Name.

Despite having found that the second limb was not satisfied, the Panel proceeded to consider the third limb.  Ultimately, the Panel found no bad faith registration or use of the Disputed Domain Name on the part of the Respondent.  In finding that the Respondent had not registered the Disputed Domain Name in bad faith, the Panel noted that the Disputed Domain Name did not include the Complainant's unregistered trade mark, "NOUS ANTI-GASPI" in its entirety, but only the term "ANTI-GASPI", which it did not consider to be the dominant feature of the trade mark.  The Panel again noted that "ANTI-GASPI" was a descriptive term that described the business activities of both parties and underlined that the Complainant's unregistered trade mark rights in "NOUS ANTI-GASPI" did not give it exclusive rights in "ANTI-GASPI" alone.

The Panel also found that there was no evidence that the Respondent was using the Disputed Domain Name with the intention of disrupting the Complainant's business operations by creating a likelihood of confusion with the Complainant's trade mark, given that the distinctive element of the Complainant's trade mark was not present in the Disputed Domain Name.  As a result, the Panel concluded that the Respondent had not registered or used the Disputed Domain Name in bad faith.

In light of the Complainant having failed to satisfy the second and third limbs, the Panel dismissed the Complaint and declined to order a transfer of the Disputed Domain Name.

Comment

This case highlights the difficulties in relying on a trade mark for the purposes of the UDRP if the part of the trade mark that is included in the disputed domain name is purely descriptive and is the non-dominant part of the trade mark.  Ultimately it also underlines the fact that the UDRP essentially remains a tool to combat cybersquatting and not to resolve more complex disputes where both parties appear to be conducting a genuine business.

The decision (in French) is available here.

Back to the top.

Authored by the Anchovy News team.

Anchovy News editorial team:

• Laëtitia Arrault
• Gabrielle Creppy
• Sean Kelly         
• Hortense Le Dosseur
• Ying Lou
• Cindy Mikul
• 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 centralized Paris-based online brand protection service called Anchovy® for global domain name strategy, portfolio management and global enforcement.

We are accredited registrars with many country-specific Registries worldwide and the only law firm to be an accredited ICANN registrar.

We also specialise in all aspects of the ICANN 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 issues arising across the globe.