Domain Name News: November/December 2024

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

.ORG surges ahead

Generic Top Level Domain (gTLD) extension .ORG has bucked the general trend towards shrinkage among the legacy gTLDs (.COM, .NET, .INFO, etc.) to not only grow, but to hit an important milestone in 2024.

The .ORG TLD was established in 1985 and, according to a 1994 memo from Jon Postel, one of the founding fathers of the Internet, it was originally intended as “the miscellaneous TLD for organizations that didn't fit anywhere else”, to which he added that “[s]ome non-government organizations may fit here.”  Indeed, it came to be both run by its Registry as a not-for-profit organisation and also became most closely associated with registrants that were non-profit organisations, community groups, charitable operations and the like, although it has always remained open to all registrants. 

Of late, it seems that the .ORG TLD may be appealing to a wider audience, in spite of a highly competitive market bustling with new gTLD offerings.  It has surged ahead of the other legacy gTLDs, growing by around 240,000 domain names just since the beginning of 2024.  In contrast, the .COM TLD lost around 3.4 million domain names since the beginning of this year and .NET about 477,000.

In a blog post on 11 November 2024, Jon Nevett, Chief Executive Officer of Public Interest Registry (PIR), announced that .ORG had surpassed 11 million domain names under management.  “We’re incredibly proud of this milestone” he stated “because we’ve grown responsibly – keeping our nonprofit mission to make the Internet a safer place front and center along the way.”

Nevett points out in the blog post that, when PIR took over the .ORG TLD in 2003, there were only 2.6 million .ORG domain names registered, a figure that has more than quadrupled in the interim period.  He notes that the Registry consistently achieves an impressive 80+% renewal rate for all .ORG domain names.

In the blog post, Nevett details the Registry’s partnerships with NGOs such as the Red Cross, government agencies like the US Food and Drug Administration, and watchdog agencies like the Internet Watch Foundation to quickly identify and address harms online.  He cites as an example of the benefits of such arrangements that, in just the first six months of the Registry’s partnership with Internet Watch Foundation, it provided protection from child sexual abuse material for 37.8 million domain names.

The blog post also mentions the Netbeacon Institute, an organisation created and supported by the Registry and designed to combat DNS abuse, both by providing tools via which individuals and organisations can easily report online abuse such as phishing, malware, bots, spam, and pharming, as well as by releasing monthly reports, charts and analysis of trends in DNS abuse.  As Nevett asserts:

“The power of PIR has always come from its dedication to empowering the .ORG Community beyond domain registrations. Through safety resources and nonprofit community access, we support organizations in creating positive change and creating a cleaner Internet.”

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

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.ID hits the one million mark

PANDI (Pengelola Domain Name Internet Indonesia), the Registry responsible for running the Indonesian .ID country code Top Level Domain (ccTLD), has recently announced that registrations under .ID have surpassed the one million mark.  This milestone was reached in November 2024, with a total of 1,002,513 registered .ID domain names. 

The one million plus domain names were split amongst PANDI’s top 5 .ID extensions, namely .MY.ID (370,759 registered domain names), .ID (280,119), .BIZ.ID (125,325), .CO.ID (101,522) and .SCH.ID (43,716).

The President of PANDI, John Sihar Simanjuntak, explained that the increase in the number of .ID domain name registrations has been helped by the active support of the government and registrar partners.  He added that digital literacy has increased in Indonesia due to work undertaken within various “educational institutions, MSMEs, and the general public through workshops, webinars and various other programs.”

Indonesia, the world's fourth most populated country after India, China, and the United States, has an estimated population of 277 million people.  Given the size of the population, it is perhaps no surprise that there are now one million registered domain names under .ID.  However, it is worth noting that only an estimated 69% of Indonesian inhabitants have Internet access.  Nonetheless, the one million figure is in line with the data published by the Asia Pacific Top Level Domain Association (APTLD), which indicates that .ID is the largest ccTLD in Southeast Asia, ahead of .MY (Malaysia), .VN (Vietnam), .SG (Singapore) and .TH (Thailand).

Despite hitting the one million milestone, PANDI still wants to expand the .ID domain name space and aims to achieve this by, among other things, continuing to support and work with MSMEs and Cooperatives to “transform into a “digital ecosystem.”  John Sihar Simanjuntak stated that "PANDI wants the .ID domain to provide wider benefits to the community” and went on to add that it is therefore “also exploring cooperation with the Ministry of Cooperatives and the Ministry of MSMEs in preparing a new Second Level Domain (SLD) to encourage MSMEs and Cooperatives to Go Digital and Go Global".

PANDI also believes that the expansion of .ID will have positive impact on Indonesia’s general economy, believing that increased digitisation will be beneficial to businesses, create new employment opportunities and increase people’s incomes.  However, PANDI is also conscious that there has been an increase in what it perceives as “negative content”, such as online gambling, and that this negative content is the “biggest challenge in the era of digital transformation”.  With this in mind, PANDI has created the Indonesia Domain Abuse Data Exchange (IDADX) platform, in order to improve data security from cyber threats, and by doing so, provide the best service possible to partners and customers, as well as strengthening public trust in the .ID domain name space.

Should you be interested in registering a domain name under .ID or any other TLDs, please contact David Taylor or Jane Seager.

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Domain name recuperation news

Effective domain name disputes: the importance of transparency and evidence

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 at issue on the basis that there was no credible evidence to establish that it was registered and used in bad faith.  Given this, the Panel found that the Complaint was brought in bad faith and constituted an abuse of the administrative proceeding, known as Reverse Domain Name Hijacking.

The Complainant was A. AUGIS and ARTHUS BERTRAND, two related French entities engaged in the manufacture and sale of jewellery, viewed for the purposes of the decision as a single entity.  The Complainant owned French and EU trade marks for AUGIS, respectively registered in 1990 and 2014, and operated its principle website in French using the domain name <augis.fr>. 

The Respondent was Mira Holdings, a domainer based in the USA. 

The Domain Name <augis.com> was originally registered in 1998 by the Complainant, who held it until 2013 when the registration lapsed.  It was then auctioned and acquired by the Respondent on 7 July 2014.  Based on the Complainant's evidence, the Domain Name previously pointed to a page with "click-through" links to third party sites offering similar products to those offered by the Complainant.  The Respondent disabled parking for the Domain Name after it was notified of the Complaint.  At the time of the decision, the Domain Name resolved to a webpage indicating that it may be for sale. 

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.

With respect to the first limb, both Parties agreed that the Domain Name was identical to the Complainant's AUGIS trade mark, although the Respondent noted that the Complainant's business appeared entirely restricted to France.  Since the Respondent's argument was more relevant to the assessment of the third requirement, the Panel held that the first limb was satisfied. 

Regarding the second limb, faced with the Complainant's assertions regarding its lack of rights or legitimate interests in respect of the Domain Name, the Respondent claimed that it had a legitimate interest in acquiring this name for resale given that the term "augis" was a name (most commonly a surname, but in some cases a first name, apparently of Lithuanian origin), as supported by the detailed evidence provided by the Respondent.  Based on the UDRP decisions cited by the Respondent, trade in non-exclusive and non-distinctive personal names and surnames has long been recognised as a legitimate activity under the UDRP.  Additionally, the Respondent claimed that the Domain Name directed users to a dynamic parking page, where the displayed links were geographically tailored. Consequently, the Respondent argued that it had neither knowledge of nor control over the third-party links appearing on the parking page.  In view of its findings under the third limb, the Panel chose not to specifically address the issues related to the second requirement.

As far as the third limb was concerned, the Complainant argued that the Respondent knew or should have known about the Complainant's earlier rights in the AUGIS trade marks.  The Complainant contended that, upon acquiring the Domain Name, the Respondent had a duty to investigate its prior use and determine whether the previous registrant held any relevant rights.  In the Complainant's opinion, the Respondent's failure to conduct due diligence was therefore indicative of bad faith at the time of registration of the Domain Name.  Regarding its prior knowledge of the Complainant's trade mark rights, the Respondent pointed to the limited geographical scope of those rights and emphasised the absence of evidence demonstrating that the Complainant was well-known outside of France.  As well as noting that the Complainant was the original registrant of the Domain Name and had allowed it to lapse, the Respondent highlighted that the Complainant had previously owned or applied for several U.S. trade marks for AUGIS, which were later abandoned.  The Respondent argued that expecting it to learn French in order to conduct a search on the French Trademark Registry's website (INPI) before registering what was clearly a surname was unreasonable and "asking a bit much".

From the Panel's perspective, the absence of any mention in the Complaint about the Complainant's original registration of the Domain Name, combined with the Complainant's failure to explain how or why it allowed the registration to lapse in its supplemental filings, suggested that the lapse was neither inadvertent nor unintentional.  Taking into account the Complainant's inaction to recover the Domain Name after it lapsed, along with its abandonment of its U.S. trade marks, the Panel found it reasonable to infer that the Complainant likely made a deliberate decision to allow the Domain Name to lapse in 2013 and chose not to disclose this history to the Panel.  Conversely, based on the detailed evidence provided by the Respondent, the Panel acknowledged that the Domain Name held potential value as a personal name, entirely independent of any association with the Complainant, and therefore fell within the Respondent's typical domain name search profile, which involved registering name-related domain names for resale.  Regarding whether the Respondent had prior knowledge of the Complainant's trade mark rights, the Panel observed that the Complainant's business was confined to France, and its official website was entirely in French. There was nothing to suggest that the Respondent, based in the US, should be aware of the Complainant's business and its trade mark.  Additionally, the Panel questioned the Complainant's claim that a domain name registrant had a global obligation to search for trade mark rights simply to register a five-letter word that was clearly used as a personal name.  The Panel specifically noted the Complainant's inaccurate and incomplete citation of a referenced UDRP decision. 

Given the above, the Panel concluded that there was no credible evidence to establish the Respondent's bad faith under the UDRP.  The third limb was therefore not satisfied and the Complaint was denied.  The Panel also found that the Complaint constituted Reverse Domain Name Hijacking, particularly in light of the Complainant's failure to address its previous registration of the Domain Name and its inaccurate case citation.

It is also worth noting that the Respondent filed a lawsuit in Arizona upon receipt of the UDRP Complaint for a Declaratory Judgment under the Lanham Act and Reverse Domain Name Hijacking in violation of the Anticybersquatting Consumer Protection Act.  However, the Panel declined to suspend or terminate the UDRP proceedings as a result, noting that the UDRP Rules provided that Panels had the discretion to decide whether or not to proceed to a decision.

This decision highlights the importance of transparency and evidence when brand owners seek to recover domain names through the UDRP process.  Experienced UDRP Panels will take the time to fully understand all the surrounding circumstances and avoid being misled. They will also not hesitate to make a decision, even when faced with concurrent litigation proceedings, if, as the Panel in this case found, a decision on the merits under the UDRP may render any court proceedings otiose, and thereby assist the parties in saving costs and providing finality within a rapid timescale. 

The decision is available here.

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Complainant boxed in despite Respondent's default

In a recent decision under the Uniform Domain Name Dispute Resolution Policy ("UDRP") before the World Intellectual Property Organization ("WIPO"), a single-member Panel denied a complaint to transfer a disputed domain name, finding that the Complainant failed to demonstrate the essential elements of bad faith registration and use by the Respondent.

The Complainant, Boxhub ApS, was a Danish company specialising in the sale of shipping containers and logistics services.

The Respondent, De Dote, DeDote, was an entity based in the United Arab Emirates.  No Response was filed.

The disputed domain name, <boxhubcargocontainers.com>, was registered in May 2020.  At the time of filing the Complaint, the disputed domain name resolved to a website branded "BOXHUB CARGO CONTAINERS," which offered container-related goods and services and stated that it was operated by “BoxHub Cargo Containers Trading LLC.

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

1. 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  
2. the respondent has no rights or legitimate interests in respect of the domain name; and 
3. the domain name has been registered and is being used in bad faith.  

On the first point, the Complainant demonstrated ownership of registered trade marks for "BOXHUB" in the United States and the European Union, filed in August and December 2020, respectively.  The Panel noted that the disputed domain name incorporated the "BOXHUB" mark in its entirety, with the addition of the descriptive terms "cargo" and "containers."  The inclusion of these terms did not prevent a finding of confusing similarity, and the Panel determined that the Complainant had satisfied the first requirement.

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

Turning to the issue of bad faith, the Complainant argued that the Respondent had deliberately targeted its trade mark by registering a materially identical domain name to operate a business in the same industry. The Complainant also accused the Respondent of cybersquatting by attempting to capitalise on its goodwill and also claimed that text from the Complainant’s website had been copied.

The Panel rejected these arguments, observing that the disputed domain name was registered in May 2020, several months before the Complainant’s trade mark filings.  While the Complainant asserted unregistered rights in the "BOXHUB" mark, it had failed to provide evidence of distinctiveness or use of the mark prior to the registration date of the disputed domain name.  The Panel noted that the Respondent apparently operated in the same industry as the Complainant, albeit in a different geographic region, although the mark "BOXHUB" was a combination of two dictionary words that was not entirely obvious.  However, without proof of the Complainant's prior rights, the Panel could not conclude that the Respondent had acted with any bad faith intent.  The Panel also rejected the allegation of website text copying, noting that the Complainant had failed to provide any evidence to substantiate its claim.  Additionally, the Panel underlined the presence of an apparently genuine business operating under the name "BoxHub Cargo Containers Trading LLC" in the Middle East and noted that the Complainant had failed to address this, which undermined the Complainant's claims of bad faith targeting.  Finally, the Panel found that the Respondent’s use of a privacy service was deemed irrelevant, as the Respondent disclosed its identity on the associated website and did not appear to use the service maliciously, merely to avoid being notified of a UDRP proceeding.

Ultimately, the Panel concluded that the Complainant had not established bad faith registration and use.  As such, the Panel denied the Complaint.

This decision underscores the critical importance of providing compelling evidence of rights and bad faith registration and use in UDRP proceedings.  Complainants must ensure that their claims are supported by clear and specific documentation, particularly when alleging unregistered rights or nascent trade mark rights.  The burden lies with complainants to present clear and compelling evidence of deliberate targeting, such as specific actions by a respondent aimed at exploiting a complainant’s trade mark or goodwill.  It should be noted that Panels may find that a complainant has failed to prove its case, even if a respondent defaults and fails to participate in the proceedings.

The decision is available here.

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Final Drive, but no finish line

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 <bobcatfinaldrivesales.com>.  The Panel determined that the Respondent demonstrated a legitimate interest in the Domain Name and declined to find that it was registered or used in bad faith.

The Complainant, Doosan Bobcat North America, Inc., was a US-based provider of compact construction equipment, known particularly for its BOBCAT-branded machinery.  The Complainant held trade mark registrations for BOBCAT, including a U.S. trade mark registration, registered on 2 December 1958. 

The Respondent was Mohit Jagwani of Engine World USA, also based in the United States.  The Respondent registered the disputed Domain Name on 6 July 2020 and used it to operate a business selling aftermarket parts compatible with the Complainant's products.  The Respondent's website at the Domain Name featured the Complainant's BOBCAT trade mark prominently in the website header and there was no disclaimer as to the lack of relationship between the Complainant and the Respondent.  In response to a cease and desist letter from the Complainant's counsel  objecting to the use of the BOBCAT trade mark on the Respondent's website, the Respondent updated its website, including to remove prominence of the BOBCAT trade mark from the website header, to re-categorise its products and to add a disclaimer as to the lack of relationship between the parties to reduce potential confusion.

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 Complainant argued that it satisfied each of the three requirements under the UDRP. In its Response, the Respondent argued that it had used the disputed Domain Name in connection with a bona fide offering of goods and that it was operating a legitimate business selling aftermarket parts for Bobcat machinery that matched or exceeded the quality and performance of the Complainant's products.  The Respondent also argued that it was using the disputed Domain Name in connection with a bona fide offering of goods with regard to the four elements of the test established in Oki Data Americas, Inc. v. ASD, Inc., WIPO Case No. D2001-0903 (the Oki Data Test):

• The respondent must actually be offering the goods or services at issue.
• The respondent must use the site to sell only the trademarked goods; otherwise, it could be using the trademark to bait Internet users and then switch them to other goods.
• The site must accurately disclose the respondent’s relationship with the trademark owner.
• The Respondent must not try to corner the market in all domain names, thus depriving the trademark owner of reflecting its own mark in a domain name.

The Panel found that the Complainant had uncontested rights in the BOBCAT trade mark and that the addition of the terms "final", "drive" and "sales" to the mark did not prevent a finding of confusing similarity between the Domain Name and the Complainant's BOBCAT trade mark for the purposes of the first element of the UDRP.  As a result, the first element of the UDRP was satisfied.

In relation to the second element, the Panel found that the Respondent had demonstrated a legitimate interest in the Domain Name. The Respondent presented evidence that it sold aftermarket parts and argued that it had taken steps to comply with the Oki Data Test as detailed above.  These steps included adding a disclaimer to the website to reduce any potential confusion, as well as adding other language to clarify that the Respondent was supplying aftermarket parts.  The Panel found that, whilst the Respondent's conduct before receiving the Complainant's cease and desist letter left Internet users who visited its website possibly unsure whether they were being presented with actual BOBCAT products or aftermarket parts, the changes that the Respondent made to its website illuminated the overall bona fide offering of goods using the disputed Domain Name.  The second element was therefore satisfied.     

The Panel also recognised that the Complaint raised complex trade mark issues that would be more appropriately resolved by a court of law rather than under the UDRP . In particular, the Panel noted that a core issue in this case was whether the Respondent's use of a trade mark in the disputed Domain Name and on the website infringed the Complainant's trade mark rights.  Considering this issue would involve a nuanced analysis of trade mark law, which may be more appropriately undertaken by a court of competent jurisdiction.

In light of its findings under the second element, the Panel declined to consider whether the Domain Name had been registered and used in bad faith under the third element, although it did note under the second element that overall the Respondent had not engaged in the typical sorts of actions usually associated with domain name registrants who are accused of bad faith cybersquatting. 

Accordingly, the Panel denied the Complaint. 

Comment

This case highlights the significance of the Oki Data Test in determining legitimate interest in cases involving aftermarket parts and branded products.  While the use of a trade mark in a domain name may lead to confusion, action taken by a respondent to clarify its relationship with the trade mark holder following receipt of a cease and desist notice can lead to a finding of legitimate interest under the UDRP. The Panel's comments on trade mark infringement and bad faith cybersquatting act as a reminder that the UDRP is designed to deal with cases of cybersquatting rather than trade mark infringement. 

The decision is available here. 

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Authored by the Anchovy News team.

Anchovy News editorial team:

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

Anchovy® - Global Domain Name and Internet Governance

Hogan Lovells offers a unique, comprehensive and centralised Paris-based online brand protection service called Anchovy® for global domain name strategy, portfolio management and global enforcement.  We are the only law firm to be an ICANN-accredited registrar and we are accredited with a number of country-specific Registries worldwide.

We also specialise in all aspects of ICANN’s new generic Top Level Domain (gTLD) process and we are an agent for the Trademark Clearinghouse.  As the global Domain Name System undergoes an unprecedented expansion, brand owners must revise their online protection strategies and we are ideally placed to guide them.

We are also frequently brought in to advise on cybersecurity, data protection and on a whole range of technology-related issues.

 For more information on our services, please contact David Tayloror Jane Seager.