Domain Name News: March 2025

• Domain name industry news
  • .KR gets with .IT 
  • Continued domain growth for 2024 
  • .BE beefs up its infrastructure
• Domain name recuperation news 
  • No fowl play as Panel finds dispute outside of the scope of the UDRP
  • UDRP Complainant fails to establish trademark rights in personal name amid free speech concerns
  • No quick fix: contractual dispute prevents a dispute from being actionable under the UDRP

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

.KR gets with .IT

The Korean Internet & Security Agency (KISA), the body that oversees the .KR country code Top Level Domain (ccTLD) Registry, recently launched a number of second-level .KR extensions designed to cater to Korean registrants seeking domain names that “reflect the latest trends”, such as the widespread preoccupation with Artificial Intelligence (AI), Information Technology (IT) and personal blogs (ME).

The full list of extensions released by the Registry is: AI.KR, IO.KR, IT.KR and ME.KR.  Subsequent to the launch of these extensions in late 2024, a priority registration period for Korean trade mark holders ran from 3 December 2024 until 17 January 2025, during which time these holders could apply for domain names identical to their trade mark.  The extensions subsequently became available for general registration on 3 March 2025. 

The extensions are open to individuals/corporations with an address in the Republic of Korea and domain names can consist of between two and 63 English characters / numbers.

KISA is seeking to tap into the wave of popularity that other ccTLDs such as .AI (Anguilla), .IT (Italy), .ME (Montenegro) and .IO (British Indian Ocean Territory) have benefited from in recent years, whereby their ccTLDs have been repurposed and marketed based on their association with the English terms for hot topics such as AI.  At the same time, KISA has stated that it wants to offer a cost-effective alternative to these increasingly costly international offerings to Korean registrants.

In this regard, KISA Director Lee Sang-joong said, “With the creation of these new three-stage country domains, ‘ai.kr,’ ‘io.kr,’ ‘it.kr,’ and ‘me.kr,’ companies or individuals pursuing new businesses can now register the domain names they want at a reasonable cost compared to similar overseas country domains.”

It will be interesting to see whether other ccTLD Registries follow KISA’s lead in adding these zeitgeisty extensions.

Should you require any further information regarding .KR domain names, please contact David Taylor or Jane Seager.

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Continued domain growth for 2024

The Domain Name Industry Brief (DNIB) recently released its Quarterly Report for Q4 2024 providing an update on the state of domain name registrations and highlighting some positive growth overall.

According to the DNIB Report, there were 364.3 million domain names across all Top Level Domains (TLDs) at the close of Q4 2024.  This marks a modest increase of 2 million registrations, or 0.5%, compared to the previous quarter.  Year-over-year, domain name registrations grew by 4.4 million, or 1.2%, reflecting a continued upward trend in the domain name industry.

Taking generic Top Level Domains (gTLDs), the two most popular gTLDs, .COM and .NET, had a combined total of 169 million domain names at the end of Q4 2024 (156.3 million for .COM and 12.7 million for .NET), a decrease of 0.5 million, or 0.3%, compared to Q3 2024.  Year-over-year, they showed a combined decrease of 3.7 million domain names, or 2.1%.  New .COM and .NET domain name registrations totaled 9.5 million at the end of Q4 2024, compared to 9 million the previous year.  Despite this decrease and the rise of newer, more niche gTLDs, traditional gTLDs maintain their dominance due to their established recognition.  As for the other legacy gTLDs (such as .ORG, .BIZ, .INFO…), they totaled 17.6 million at the end of last year.

Turning to new gTLDs, the number of domain name registrations rose in 2024, with 36.8 million domain names at the end of Q4 2024, an increase of 1.4 million, or 4%, compared to Q3 2024.  Businesses are increasingly investing in more specific and memorable domain names offered by newer gTLDs, especially as .COM has become saturated.  The report shows that at the end of 2024, the largest new gTLD was still .XYZ with 3.8 million domain names, followed by .SHOP with 3.5 million and .ONLINE with 3 million, and new gTLDs collectively accounted for about 10.1% of all TLD registrations.

According to the DNIB Report, at the end of 2024, there were 1,264 gTLD extensions (legacy gTLDs and new gTLDs combined) delegated in the root zone, with the top 10 gTLDs representing a massive 89.5% of all gTLD registrations and nearly 55% of all TLD registrations (that is to say, gTLDs and ccTLDs combined).

As regards country code Top Level Domains (ccTLDs), domain name registrations continued to grow steadily and, at the end of Q4 2024, there were 140.8 million ccTLD domain names, representing an increase of 0.8 million, or 0.6%, compared to Q3 2024.  Year-over-year, ccTLD domain names increased by 2.5 million, or 1.8%.  The Report states that at the end of 2024, there were 316 global ccTLD extensions delegated in the root zone, with the top 10 ccTLDs representing over 58% of all ccTLD domain name registrations.  The most popular ccTLDs by volume are .CN (China) with 19.7 million domain names at the end of Q4 2024, .DE (Germany) with 17.7 million, and .UK (United Kingdom) with 10.3 million.  This continued growth can be explained by the fact that many businesses and individuals prefer to register domain names under their country’s own ccTLD in order to enhance local visibility.

Finally, the Report shows that the 10 largest TLDs (of any type) by number of reported domain names have remained the same for all of 2024 and are .COM, .CN (China), .DE (Germany), .NET, .ORG, .UK (United Kingdom), .RU (Russia), .NL (Netherlands), .BR (Brazil) and .AU (Australia).

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

.BE beefs up its infrastructure

DNS Belgium, the Registry responsible for running the .BE country code Top Level Domain (ccTLD), as well as the .BRUSSELS and .VLAANDEREN generic Top Levels Domains (gTLDs), has recently announced that it has strengthened its infrastructure in order to ensure the maximum availability of these TLDs and better protection against attacks or incidents.

To achieve this, DNS Belgium has set up dedicated local nameservers with the four largest Internet Service Providers (ISPs) of Belgium. These nameservers are identical copies of each other and are located in different geographical areas. They host the information required to view or use a .BE, .BRUSSELS or .VLAANDEREN website or email address.

This new technical setup, which ensures that there is always at least one well-functioning and fast nameserver, reenforces protection against cyberattacks, such as Distributed Denial-of-Service (DDoS) attacks. A DDoS attack is a malicious attempt to disrupt the normal traffic of a targeted nameserver, service or network with the aim of forcing the website or network service offline.  With the new infrastructure in place, if Internet traffic in Belgium is disrupted by a cyberattack, it will be routed through the locally installed server at the ISPs, and customers should not be affected.

Referring to the Network and Information Security Directive (the EU-wide legislation on cybersecurity), Kristof Tuyteleers, Chief Information Security Officer at DNS Belgium, has stated: “This collaboration perfectly aligns with NIS2 by strengthening the availability, DDoS resistance, and sovereignty of critical network services.”  

According to DNS Belgium, the collaboration covers approximately 90% of the marketand “customers of the 4 largest ISPs can count on a more reliable and secure Belgian internet”, all of which is, for DNS Belgium, “an essential step towards greater resilience in terms of cybersecurity”.

To visit DNS Belgium’s website, please click here.

For more information on .BE domain names, please contact David Taylor or Jane Seager.

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Domain name recuperation news

No fowl play as Panel finds dispute outside of 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), the Panel rejected a Complaint filed by Internationaler Verein für biologisch-dynamische Landwirtschaft regarding the domain name demeterchickencage.com.  The Panel concluded that the dispute involved a broader trade mark conflict that fell outside the scope of the UDRP.

The Complainant was Internationaler Verein für biologisch-dynamische Landwirtschaft, a Swiss certification organisation for biodynamic agriculture.  It owned the DEMETER trade mark, which was registered internationally, including in China, since 2002, covering various agricultural products and services.  The Complainant asserted that the Respondent's use of "Demeter" in the disputed domain name misappropriated its brand and risked causing consumer confusion. 

The Respondent was Henan Demeter Machinery Co., Ltd ("Henan Demeter"), a Chinese company specialising in poultry farm equipment solutions.  Henan Demeter was established in 2020 and held a Chinese trade mark for DEMETER YOUR FARM PARTNER, registered in 2022 in Class 7 for agricultural machinery. 

The Domain Name demeterchickencage.com was registered on 3 September 2021 by the Respondent.  The associated website was actively used to promote and sell poultry farming equipment under the Henan Demeter brand.  The website claimed over 27 years of industry experience and included client testimonials, product descriptions and sales records. 

Before addressing the substantive issues of the case, the Panel considered an unsolicited supplemental filing.  It was submitted by the Complainant on 9 January  2025, after the Respondent had filed its Response, but before the Panel was appointed.  The filing aimed to introduce additional evidence regarding the reputation of the DEMETER trade mark.  Under the UDRP Rules, supplemental filings are only permitted in exceptional circumstances, such as newly available or unforeseeable evidence.  The Panel found no justification for the late submission, as it merely reiterated existing claims rather than presenting new facts.  Since the Complainant had already been given a fair opportunity to present its case, the Panel declined to accept the supplemental filing.

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.

On the substantive issues, the Panel first considered whether the disputed domain name was identical or confusingly similar to a trade mark in which the Complainant had rights.  The disputed domain name demeterchickencage.com incorporated the DEMETER mark in its entirety, with the addition of the descriptive terms "chicken cage", referring to the products sold on the Respondent’s website.  The Panel determined that the inclusion of these terms did not prevent a finding of confusing similarity, as the dominant element of the domain name remained "Demeter", which was identical to the Complainant’s trade mark.  Accordingly, the Complainant satisfied the first requirement.

The Panel then addressed limbs two and three together.  The Panel highlighted that the Complainant’s DEMETER trade mark was registered in China before the Respondent registered the domain name in 2021, and it claimed long-standing use in certification.  However, the Panel observed that the word “Demeter” also referred to the Greek goddess of grain and fertility, and noted its relevance to the Respondent’s field of activity, which provided a potential explanation for the Respondent’s choice of company name and trade mark.  Nothing on the Respondent's website referred to the Complainant or biodynamic agriculture. The parties were unrelated, and while multiple entities held Demeter-related trade marks, as argued by the Respondent, many could be national affiliates of the Complainant.  Given these factors, the Panel found that this was not a case of abusive cybersquatting, but rather a wider trade mark dispute. The dominant textual element of the Respondent’s registered trade mark was identical to the Complainant’s registered trade mark, and both parties operated in the field of agriculture.  As the UDRP was designed for clear cases of cybersquatting, the Panel denied the Complaint, not on the merits, but on the broader ground that the case was part of a wider, more complex trade mark dispute that exceeded the scope of the UDRP and would be more appropriately addressed by a court of competent jurisdiction.

The Panel also addressed the issue of Reverse Domain Name Hijacking (RDNH), which occurs when a complainant misuses the UDRP process.  The Respondent alleged that the Complainant had attempted RDNH by filing a meritless Complaint without considering whether it had sufficient evidence.  However, the Panel declined to make a finding of RDNH, noting that the Complainant’s case was not baseless.  The Panel emphasized that the mere lack of success of a Complaint was not enough to constitute RDNH.  As a result the Complaint was denied.

This case serves as a reminder that the UDRP cannot be used as a general domain name court, and is not designed to adjudicate all disputes of any kind that relate in any way to domain names.  Instead it is intended to be a streamlined administrative dispute resolution procedure intended only for abusive trade mark related cybersquatting, and thus requires clear evidence of bad faith targeting and a lack of legitimate interests to succeed.

The full decision is available here.

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UDRP Complainant fails to establish trademark rights in personal name amid free speech concerns

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 regarding the disputed domain names fredricmwinocur.com and fredricwinocur.com (the "Domain Names"), finding that the Complainant had failed to establish trademark rights, and further finding that the Complainant had failed to establish that the Respondent had no rights or legitimate interests in the Domain Names.

The Complainant was a United States boutique law firm and the domain names reflected the name of one of their individual lawyers.

The Domain Names were registered in March 2024 by a former client of the Complainant.  The Domain Name fredricwinocur.com previously pointed to a website that displayed a statement criticising the lawyer.  At the time of the decision, the Domain Names did not resolve to active web pages.

The Complainant asserted rights in the name of the firm as well as in the lawyer's personal name, and contended that the Domain Names were confusingly similar to those names.  The Complainant argued that the Domain Names were registered to defame the reputations of the firm and the lawyer, causing them financial harm.

To succeed under the UDRP, a complainant must satisfy the requirements of paragraph 4(a) of the Policy:

1. The disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
2. The respondent has no rights or legitimate interests in respect of the disputed domain name;and;
3. The disputed domain name was registered and is being used in bad faith.

Identity or confusing similarity

The Complainant asserted trademark rights in the law firm name, but failed to provide any evidence to support claims of unregistered trademark rights.  The Panel noted that while there were questions regarding the confusing similarity between the Domain Names and the alleged law firm trademark, a final determination on this issue was deemed unnecessary.

To establish unregistered trademark rights, the Complainant needed to demonstrate that the mark had become a distinctive identifier associated with his goods and services.  This required evidence of the duration and nature of the mark's use, financial investment in its promotion, and recognition by the media and in the relevant industry.  The Complainant did not present sufficient evidence to show that the personal name of the lawyer in question had acquired secondary meaning.  Specifically, documentation of consistent advertising, testimonials or surveys indicating public recognition, or any public-facing media presence such as blogs, interviews, or presentations featuring him were lacking.

Although the lawyer's professional honours highlighted his skills, the Panel found that they did not establish that his personal name had attained secondary meaning in the legal services market, noting that a personal name can only acquire secondary meaning if a significant portion of the relevant public recognizes it as a source of services rather than merely as a personal name.

Ultimately, the Panel concluded that the Complainant had not established any trademark rights in the law firm name or the personal name and therefore failed to satisfy the requirements of paragraph 4(a)(i) of the UDRP.

Rights or legitimate interests

The Panel went on to evaluate whether the Complainant satisfied the requirements of paragraph 4(a)(ii) of the UDRP.  The Panel noted that the Domain Names were registered to host criticism websites.  At the same time, the Respondent had not attempted to sell the Domain Names for profit or use them for commercial gain.;

The Panel noted that fair use, such as noncommercial free speech, would give rise to rights or legitimate interests in the Domain Names under the UDRP.  The Respondent's use of the Domain Names for criticism did not indicate an intent to divert business from the Complainant for financial gain.  The Panel further observed that while the Complainant and the lawyer might have had other legal claims against the Respondent, their defamation claims were not suitable for determination under the UDRP.

The Panel highlighted that this case was unusual because the Complainant, a law firm, had filed a UDRP Complaint regarding criticism aimed at an individual, rather than at the firm itself, therefore the case was not one involving criticism of a trademark holder and an identical disputed domain name.  The Panel reiterated its findings that the Complainant failed to establish trademark rights in the personal name, and concluded that the Complainant had not satisfied the requirements of paragraph 4(a)(ii) of the Policy.

Bad faith

The Panel further found that the Respondent's use of the Domain Names for criticism, as described above, did not establish bad faith registration and use of the Domain Names.  The Complainant therefore failed to satisfy the requirements of paragraph 4(a)(iii) of the Policy.

Comment:

This case highlights the limits of the UDRP.  While a number of ccTLD policies afford protection to rights in personal names, the UDRP's scope of protection is limited to trademarks.  The decision sets out the parameters to establish unregistered or common law trademark rights, notably in relation to a personal name, which may depend on whether the name in question is common, whether the name has been used in a commercial context, and the time period over which the name has been used.  The case also demonstrates the way in which the UDRP may provide a safe harbour for freedom of expression, including criticism, and how claims such as defamation fall outside of the scope of the UDRP, being better suited to determination by courts of competent jurisdiction.

The full decision is available here.

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No quick fix: contractual dispute prevents a dispute from being actionable under 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 UDRP Complaint for the disputed domain name dynamictapeglobal.com (the disputed Domain Name).  The Panel found that the parties were entangled in a complex ongoing business dispute and the resolution of the dispute as to the registration and use of the disputed domain name could not be dealt with independently of that dispute.

The Complainant, PosturePals Pty Ltd, was a company established in 2010 in Vanuatu.  The Complainant made medical tape products, including therapeutic tape for the treatment of muscle injury.  The Complainant sold its products under the brands "Dynamic Tape", "PowerBand" and "PosturePals".  The Complainant owned trade mark registrations for DYNAMIC TAPE in the United States and the United Kingdom, with registration dates of 2014 and 2022 respectively.

The Respondent was Comera Group Limited, a company incorporated in the United Kingdom.

Prior to the registration of the disputed Domain Name, the Complainant and the Respondent entered into a joint venture to sell Dynamic Tape, PowerBand and PosturePals in 2020 and jointly established the company Dynamic Tape Global Limited, incorporated in the United Kingdom.  Pursuant to a shareholder agreement between the parties, the Complainant granted a licence to the joint venture company to use the intellectual property specified therein for the duration of its term.  The business relationship between the parties deteriorated in 2023 and the Complainant gave the Respondent a written statement for the termination of the shareholder agreement on 16 October 2023.  The dispute was ongoing at the time of the UDRP proceeding.

The Respondent registered the disputed Domain Name on 17 October 2023.  At the time of filing the Complaint, the disputed Domain Name resolved to a website that was almost identical to the Complainant's website at its domain name dynamictape.com and offered for sale the same products.  The Terms of Use of the website at the disputed Domain Name specified that it was operated by Dynamic Tape Global Limited.

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

(i)         The domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

(ii)        The respondent has no rights or legitimate interests in respect of the domain name; and

(iii)       The domain name has been registered and is being used in bad faith.

The Complainant argued that it had satisfied each of the elements under the Policy, noting that the Respondent registered the disputed Domain Name after the termination of the shareholder agreement between the Parties, which was brought about by the Complainant's statement for termination in light of the Respondent's alleged material breaches of the shareholder agreement.  As a result, the Complainant argued that when the Respondent registered the disputed Domain Name, its licence to use the Complainant's intellectual property had terminated and so the Respondent had no legitimate basis to register or use the Domain Name.

In its informal response, the Respondent underlined, amongst other things, that the legal dispute between the parties was over 24 months old and there had already been a mediation proposal as required under the shareholder agreement.

The Complainant submitted a supplemental filing that discussed various provisions of the shareholder agreement between the Parties and their alleged effect on the issues of rights and legitimate interests on bad faith.  In light of paragraph 12 of the UDRP Rules and noting that the Complainant did not request leave from the Panel to submit its supplemental filing, nor did it provide any reasons why it could not have provided the same information in its original Complaint, the Panel found it "unnecessary and inappropriate" to take into consideration the Complainant's supplemental filing.

The Panel found that the Complainant satisfied the first element of the UDRP as it had shown rights in the DYNAMIC TAPE trade mark and the disputed Domain Name was confusingly similar to this trade mark.  The Panel was satisfied that the addition of the term "global" to the Complainant's trade mark did not prevent a finding of confusing similarity between the disputed Domain Name and the Complainant's trade mark.

In relation to the second element, the Panel noted that the parties were entangled in a complex business dispute, made more complex by the fact that the directors and principal shareholders of the joint company were the legal representatives of the Parties.  The Panel found that there was no evidence that any of the parties had attempted to dissolve the joint company or sell its shares in it, which added to the lack of clarity as to the events and how the events related to the registration of the disputed Domain Name.  Given the complex ongoing nature of the contractual dispute between the Parties, the Panel found that it was not possible to resolve the present domain name dispute before the contractual dispute had been resolved.  The Panel also noted that the resolution of the contractual dispute was well beyond the scope of the UDRP and should be resolved in the appropriate forum.  As a result, the Panel found that the Complainant could not establish that the Respondent had no rights or legitimate interests in respect of the disputed Domain Name.

Under the third element, the Panel found that it was not possible for the Complainant to establish bad faith and the Complaint was denied.

This decision underlines that a UDRP panel is not a general domain name court and that the scope of the UDRP is narrow and applies to a particular type of abusive registration arising from cybersquatting, rather than from domain names registered during business disputes.  The decision also underlines the need for parties seeking to make a supplemental filing to show the relevance of any such filing to their case and to demonstrate why they were unable to provide such information in their previous submission.

The decision is available here.

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Authored by the Anchovy News team.

Anchovy News editorial team:

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

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.