Anchovy News, January 2021

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

81,000 .EU domain names hang on the Brexit precipice

EURid, the Registry responsible for the .EU domain name, announced in an Update earlier this month that it had suspended over 81,000 .EU domain names held by registrants citing GB/GI as country code on 1 January 2021.  The domain names in question were all registered to UK or Gibraltar based, non-EU citizens and organisations, which, pursuant to the end of the UK’s 11-month Brexit transition period, are no longer eligible to hold .EU domain names under the Registry’s policy.

The domain names that have been suspended will remain in this state until 31 March 2021 when they will be placed in the “WITHDRAWN” status.  Suspended domain names no longer support services such as websites and email, but may still be reinstated if their registration data is updated to meet the eligibility criteria. 

The Update emphasises that the large number of suspensions came in spite of notices EURid had published on its website since June 2020 and emails that were sent to affected registrars. 

Registrants of the suspended domain names may salvage them by updating the registrant information to indicate an entity legally established in one of the 27 eligible EU countries or EEA Member States, or by updating their residence to a EU27 or EEA Member State, or by proving their citizenship of a EU27 Member State irrespective of their residence.

EURid was at pains to point out in the Update that:

Our support services have been working since the early hours of 2021 to help registrars and registrants to reinstate the domain names with updated contact details. To date, over 2 500 domain names were made operational again.

Withdrawn domains will become available for registration again from 1 January 2022, which poses its own set of problems in that these domain names may be picked up by unscrupulous third parties who could then use them maliciously (for example, by recreating email addresses).  It is important, therefore, that registrants who have ceded domain names this year have a plan in place to ensure that this does not happen.

 Should you any require assistance with meeting the .EU registration requirements, please do not hesitate to contact David Taylor at david.taylor@hoganlovells.com or Jane Seager jane.seager@hoganlovells.com. 

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WIPO registers its 50,000th domain name dispute

The World Intellectual Property Organization (WIPO) has recently announced that its Arbitration and Mediation Center had reached a milestone with the registration of its 50,000th “cybersquatting” case.

As most Anchovy News readers are aware, WIPO created the Uniform Domain Name Dispute Resolution Policy (UDRP) back in August 1999 to provide brand owners with an essential tool to fight abuse of their brands in domain names, and thereby protect Internet users against online deception and fraud. 

As a reminder, to be successful and obtain the transfer of a disputed domain name under the UDRP, a complainant must satisfy the following three requirements:

(i)      the domain name 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 UDRP applies to all generic Top Level Domains (gTLDs) such as .COM or .NET, as well as the new gTLDs such as .ONLINE or .SHOP.  Many national Registries running country code Top Level Domains (ccTLDs) have also adopted the UDRP, like Tuvalu (.TV) or Colombia (.CO), or a variation of the UDRP, like Spain (.ES) or China (.CN).

WIPO’s press release indicates that as of 20 November 2020, that is to say after over 20 years of activity, the Center “had administered 50,000 UDRP-based proceedings covering almost 91,000 domain names, and involving parties from over 180 countries.”

As previously reported in several Anchovy News articles, there has been a rise in global domain name registrations due to the COVID-19 pandemic.  As WIPO’s press release states, these new domain names “may be used for news/information sites, or to provide new business offerings, but – much like social media platforms – are also being used to spread misinformation and to engage in illegal and fraudulent activities.”  Unsurprisingly, the number of domain name disputes filed with WIPO has also surged during the pandemic – from January through October 2020, the Center handled 3,405 cases, which represents an 11% increase over the same period in 2019. 

Commenting on the growth in UDRP filings, Erik Wilbers, director of WIPO’s Arbitration and Mediation Center, said: “With a greater number of people spending more time online during the pandemic, cybersquatters are finding an increasingly target-rich environment. Rights owners, meantime, are stepping up their brand enforcement on the Internet as they further shift to marketing and selling online.”

The Hogan Lovells Anchovy® brand protection team led by partners and domain name panelists David Taylor and Jane Seager have considerable experience in the preparation and filing of complaints. For any question, please contact them at david.taylor@hoganlovells.com or Jane Seager jane.seager@hoganlovells.com. 

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CIRA’s free firewall service booms during pandemic

The Canadian Internet Registration Authority (CIRA), the Registry responsible for running the .CA country code Top Level Domain (ccTLD), recently announced that more than 100,000 Canadians had opted to use its CIRA Canadian Shield firewall service to protect themselves and their families from malware, phishing and other cyber-attacks.  The success of the product has been bolstered by the fact that the global Covid-19 pandemic has forced many people to work and study from home, making cybersecurity a priority. 

The CIRA Canadian Shield is a free Domain Name System (DNS) firewall service that operates on IPv4, IPv6 and the newest DNS encryption standards.  The Shield’s aim is to provide “online privacy and security to individuals and families across Canada”.  According to CIRA, the Shield offers three levels of service:

1. Private: prevents the commercialisation of the user’s DNS for better online privacy.

2. Protected: all features of Private plus added malware, botnet and phishing protection.

3. Family: all features of Protected plus added adult content blocking.

According to CIRA statistics, 82% of users have chosen the Protected service, 10% the Family service and 8% the Private service. 

CIRA partnered with the Canadian Centre for Cyber Security (Cyber Centre) to integrate its Canadian ‘threat feed’ into the Canadian Shield, as well combining public and private threat feeds from their partner, Akamai, the Canadian Centre for Child Protection. 

Importantly, CIRA gave a guarantee that no Personally Identifiable Information (PII) of any kind would be transmitted to the Canadian Centre for Cyber Security as part of this process.  In addition, CIRA committed to a full annual privacy audit, conducted by a third-party auditor, to ensure adherence to the highest standards of data privacy.  As a result, Deloitte LLP was contracted to conduct a full privacy audit of the CIRA Canadian Shield and, in August 2020, the audit found that “CIRA Canadian Shield service is suitably designed to support the achievement of CIRA’s privacy commitments”.

Mark Gaudet, business lead, cybersecurity products, at CIRA, pointed out that:

“The pandemic has amplified what we knew when we began this project, Canadian households are vulnerable and lack the tools to protect themselves. We’re proud that CIRA Canadian Shield has been able to play a critical role in protecting Canadians online during this difficult time, and hope to bring this free service to millions more in the years ahead.”

So, as large numbers of Canadians were “forced to work, learn, teach and socialize online” due to the pandemic, not only did the number of users of the Canadian Shield service surpass CIRA’s first year goal target of 100,000 users in just seven months, but since it was launched in April 2020 it has, according to CIRA, blocked more than “20 million malicious domains for its users and serves more than 500 million queries each day”.

To visit CIRA click here: https://www.cira.ca/

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Domain name recuperation news

One man’s loss is another man’s gain

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (the UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a Panel refused to order the transfer of a Domain Name because it found that the Complainant had failed to prove that the Respondent had acted in bad faith.

The Complainant was Gainvest Legal Corporation, a company based in the United States of America.

The Respondent was John Sozanski, the owner of Gainvest, LLC, also a company based in the United States of America.

The disputed Domain Name, gainvest.com , was acquired by the Respondent in 1999 and was not resolving.

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.

Before proceeding to analyse the three requirements of the Policy, the Panel underlined that, while the Parties had put forward multiple allegations, only a few of them were relevant to the WIPO proceedings.

When it came to the first limb of the UDRP, the Complainant contended that it began using the service mark GAINVEST in 2019 and that it had trademark rights in GAINVEST with the United States Patent and Trademark Office since 2020 for “investment management” services.  The Complainant added that it was the owner of the domain name gainvest.co pointing to an active website associated with its business services.

The Panel found that the Domain Name was confusingly similar to the Complainant’s GAINVEST trademark and thus the Complainant had satisfied the first limb. 

In light of its findings under the third requirement of the Policy, the Panel did not comment on the eventual existence of the Respondent's rights or legitimate interests, as per the second limb of the UDRP.

Turning to the third limb, the Complainant claimed that the Respondent’s primary purpose for registering and using the Domain Name was to disrupt the Complainant’s business.  The Respondent rebutted this argument by asserting that he registered Gainvest, LLC corporation together with his wife more than eleven years before the Complainant ever used GAINVEST as a trademark in any manner. In addition, the Respondent had sometimes used this company in connection with his business activities, which included real estate ownership, investments, rentals, land development, and construction.  This was evidenced by the submission of real estate leases and vendor invoices, amongst other things.  The Respondent also asserted that he had only heard of the Complainant in 2020, when the Complainant sent him an unsolicited message proposing to purchase the Domain Name.  During the negotiations, the Complainant, who stated that it was “a poor startup that just started in March 2019”, wanted to pay much less than the 10,000 USD that the Respondent was prepared to agree on.

The Panel noted that the Domain Name was registered 20 years before the Complainant obtained trademark rights in the term GAINVEST and 19 years before the Complainant first used this term.  The Panel therefore made a finding that the Complainant had failed to prove that the Respondent registered the disputed Domain Name in bad faith. 

In light of the above, the Panel refused the transfer of the Domain Name. 

Finally, the Panel also made a finding of reverse domain name hijacking ("RDNH").  RDNH is defined in paragraph 1 of the UDRP Rules as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name".  In this case, the Panel considered that the Complaint was seriously inadequate and doomed to failure.  The Panel first underlined that a factor sometimes tending to support a finding of RDNH was a complainant’s representation by counsel, which was the case in the present proceedings.  The Panel then found that there was absolutely no evidence suggesting that the Respondent could have been aware of the Complainant before receiving the message with the purchase offer.  Furthermore, the Panel stated that the Complainant made “a series of utterly frivolous allegations” without presenting any arguments or evidence.  As an example, the Panel noted the Complainant’s assertion that the Domain Name “was registered by Respondent primarily for cybersquatting, to disrupt the business of Complainants while obtaining payment for that disruption.”  The Panel also strongly disagreed with the Complainant’s claim that bad faith was evidenced by the fact that the Respondent had registered the Domain Name in 1999 but only adopted a corresponding business name in 2008.  In the Panel’s opinion, the best that could be said in defence of the Complainant’s motives was that the Respondent had never made much, if any, actual use of the Domain Name for more than 20 years.  Even so, the Panel found that the accumulation of frivolous arguments by the Complainant was sufficient to tip the balance in favour of a finding of RDNH.

This decision once again illustrates that complainants should think seriously about bringing a complaint under the UDRP when the date that the respondent registered or acquired the domain name pre-dates the complainant's rights, especially by some years.  It also serves as a reminder that the mere willingness of a registrant to sell a domain name further to receiving an offer does not constitute bad faith when the registrant has a legitimate interest in such domain name and did not obtain it in bad faith. 

The decision is available here.

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Cloudy outcome despite identical trademark

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of a domain name because the Complainant failed to demonstrate that the Respondent lacked rights or legitimate interests in the disputed domain name, although its trademark was identical.

The Complainant was Clever Cloud SAS, of France, a company established in 2010 and operating in IT solutions under the name “Clever Cloud”.  It was the owner of a French trademark in CLEVER CLOUD registered in 2010 and continuously used since then.

The Respondent was Dr.-Ing. Benjamin Poppinga, an individual based in Germany.  No further information was provided.

The disputed Domain Name was clever.cloud, registered on 16 February 2016.  It was resolving to a blank page.

As a preliminary issue the panel had to determine the language of the proceedings.  Pursuant to paragraph 11 of the UDRP Rules, the language of the proceeding is the language of the registration agreement, unless both parties agree otherwise or the panel determines otherwise. 

In the present case, the registration agreement was in German, but the Complainant requested English as the language of the proceedings on the basis that the Respondent’s personal website was available in English and the pre-complaint correspondence between the Parties was also in English.  However the Respondent requested German.  It was therefore for the Panel to determine the language of the proceedings.  The Panel was of the view that it would not be prejudicial for the Respondent if English was adopted, and substantial additional expense and delay would likely be incurred if the Complaint had to be translated into German.  Therefore, the Panel decided that the language of the proceedings was English.

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 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.

As far as the first limb was concerned, the Panel was satisfied that the Complainant had rights in the trademark CLEVER CLOUD and that the Domain Name incorporated the Complainant’s trademark in its entirety.

As stated in section 1.11.3 of the WIPO Overview 3.0:

“Where the applicable TLD and the second-level portion of the domain name in combination contain the relevant trademark, panels may consider the domain name in its entirety for purposes of assessing confusing similarity (e.g., for a hypothetical TLD “.mark” and a mark “TRADEMARK”, the domain name  trade.mark   would be confusingly similar for UDRP standing purposes).”

In the case at hand, the Panel noted that second-level of the Domain Name, “clever”, in combination with the TLD “.cloud”, contained the Complainant’s CLEVER CLOUD trademark in its entirety.  The Panel therefore found that the Domain Name was identical to the Complainant's trademark.  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 prove that the respondent had no rights or legitimate interests in respect of the domain name in question.  A complainant is normally required to make out a prima facie case and it is 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 trademark directly or indirectly related to the Domain Name.  The Complainant further claimed that the Respondent’s only interest in the Domain Name was to sell it at the highest possible price.

The Respondent argued that he started to work on a project, named the “Clever Cloud-Project”, in 2015 for the purpose of fabricating and distributing a colouring book.  The Respondent conducted a trademark search at that time, which drew his attention to the Complainant’s CLEVER CLOUD trademark, but he concluded that the Complainant’s trademark did not collide with his colouring book project.  The Respondent further claimed that the Complainant’s CLEVER CLOUD trademark was a French trademark whereas his colouring book was initially to be published in German-speaking countries only.  In addition, the Respondent contended that the Domain Name had already been used in connection with his colouring book project in the form of a planned book with the title “Clever Cloud”, explaining that there was a reference to the Domain Name in the book including the associated email address “info@clever.cloud” on the spine and in the imprint, for example for feedback regarding the book.  The Respondent added that his book would be published in 2021 and he planned to offer supporting material, such as additional colouring pictures and merchandise articles, on the website associated with the Domain Name.  In support of his contention, the Respondent submitted evidence, such as a business plan and pictures of the colouring book, to prove his legitimate interests in the Domain Name.

In the Panel’s view, given the above, on balance the Respondent had provided sufficient evidence that he had made demonstrable preparations to use the Domain Name in connection with a bona fide offering of goods or services within the meaning of paragraph 4(c)(i) of the Policy.

Regarding the Respondent’s alleged interest only in selling the Domain Name, the Panel found the Complainant’s arguments unconvincing because the Respondent only rarely responded to the Complainant’s attempts to buy the Domain Name and never contacted the Complainant.  There were no indications that the Respondent had actually tried to sell the Domain Name to the Complainant, nor to any third parties.  In light of this, the Panel found that the Respondent’s conduct in using the Domain Name was considered a bona fide offering of goods.

Therefore, the Panel concluded that the Complainant, having made out a prima facie case which was rebutted by the Respondent, had not fulfilled the requirements of paragraph 4(a)(ii) of the UDRP.  Given this finding, the Panel did not need to address the third limb as a complainant must cumulatively fulfill all three requirements under the UDRP.  However, the Panel decided to do so.

In the case at hand, 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 that the Domain Name had therefore been registered and used in bad faith.

In response, the Respondent argued that he registered the Domain Name in 2016 in good faith for his colouring book project.  Having reviewed and considered the Complainant’s CLEVER CLOUD trademark, he came to the conclusion that the products and services covered by the Complainant’s CLEVER CLOUD trademark did not relate to his colouring book project, thus the Complainant’s rights were not impaired by the Respondent’s registration and use of the Domain Name.  Contrary to the Complainant’s assertions, the Responded denied having any intention to sell the Domain Name for profit and any statements regarding a possible value of the Domain Name were made because of the efforts invested in the described colouring book project for several years.

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 contended that the Complainant’s trademark rights were not impaired by the Respondent’s colouring book project.  Furthermore, the Panel was unconvinced by the Complainant’s arguments that the Respondent’s only interest in the Domain Name was to sell it to the Complainant at the highest possible price.

The Complaint was therefore denied.

This decision highlights the fact that trademark holders will not necessarily succeed in obtaining transfer of a domain name identical to their trademark under the UDRP, even if the respondent in question has some awareness of their rights.  In such cases, respondents may still be able to provide sufficient evidence that they have rights and legitimate interests in a domain name matching a complainant’s trademark, despite having no trademark rights themselves.

The decision can be found here.

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Tecme out

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  tecme.com  , finding that the Complainant had failed to prove that the Respondent had registered and used the domain name in bad faith, and entering an unsolicited finding of Reverse Domain Name Hijacking (RDNH).

The Complainant was Tecme S.A., an Argentinian manufacturer of mechanical ventilators used in hospital intensive care units.  The Complainant registered several trademarks for TECME between 2010 and 2020.

The Respondent was Stephen Bougourd, an individual based in Jersey, who once operated a computer training business called Technology Made Easy, abbreviated as “Tecme”.  He registered the disputed domain name in March 2000.  At the time of the proceedings, the domain name resolved to a parking page.

The Complainant 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:

(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. 

Under paragraph 4(a)(i) of the UDRP, the Panel found that the Complainant had established rights in the TECME trademark, and that the disputed domain name incorporated the Complainant's registered mark in its entirety.

Under paragraph 4(a)(ii) of the UDRP, the Panel considered that the Complainant had established a prima facie case that the Respondent had no rights or legitimate interests in the domain name, and the Respondent had failed to rebut that case.  Specifically, the Panel found that, although the Respondent had plausibly acquired the domain name as the abbreviated form of a business name that he had previously registered, it was now no longer active.  The Panel stressed that, in order for respondents to prevail under this paragraph, their rights or legitimate interests must generally be current at the time of UDRP proceedings.

Under paragraph 4(a)(iii) of the UDRP, the Panel held that the Complainant had failed to establish bad faith registration and use by the Respondent.  The Complainant argued that it had been using TECME as its company name since 1996 and that the Respondent, seeking to exploit the Complainant's reputation, had parked the disputed domain name for speculative gain.  The Respondent countered that he had never heard of the Complainant, that he registered and used the domain name in relation to his previous business and kept it for potential future use.  The Panel underlined that the Complainant did not have a trademark for TECME at the time that the domain name was registered and had failed to submit evidence supporting a case for common law protection.  The Panel further found that the Respondent may not have been aware of the existence of the Complainant because he worked in an entirely different industry.  Finally, the Panel held that the Respondent had a plausible reason to register and use the disputed domain name as an abbreviation of his business name and as such had proved that he had not registered nor used the domain name in bad faith.

The Panel concluded by entering an unsolicited finding of RDNH on the basis that the Complaint concerned a domain name registered over twenty years ago but no persuasive evidence of prior trademark rights or prior knowledge of the Complainant by the Respondent (on the other side of the world) had been submitted.  The Panel also underlined that the Complainant omitted or failed to discover that the domain name had previously resolved to a corporate website for a business with a name for which the domain name was a logical abbreviation, even though the Complainant had submitted evidence that the Respondent had parked the domain name for many years.  In the Panel's opinion this indicated that overall the Complainant lacked realism as to the success of its Complaint. 

This decision illustrates, once again, the importance for complainants to convincingly establish the existence of their trademarks or their reputation at the time the domain name was registered in order to prove bad faith.  This is especially true when the businesses conducted by both parties have nothing in common, so that prior knowledge by a respondent cannot be easily inferred.  As seen in this case, failure to do so will often lead to a finding of RDNH by a Panel.

The full decision is here.

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Anchovy News editorial team:
Laëtitia Arrault
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.