This is the February edition of Anchovy News. Here you will find articles concerning ICANN, the domain name industry and the recuperation of domain names across the globe. In this issue we cover:

DOMAIN NAME INDUSTRY NEWS

  • The impact of Brexit on French domain names
  • UK-based .EU domain name registrants get reprieve
  • Change brings new life to .PT
  • Progress Report provides snapshot of .EU ecosystem

DOMAIN NAME RECUPERATION NEWS

  • Complaint for ecourier.com fails to deliver
  • Bad faith registration claim defeated by panel’s research
  • No cybersquatting, no jurisdiction

Newsletter sections:

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

The impact of Brexit on French domain names

AFNIC, the French domain name Registry, has clarified in a recent publication the impact of Brexit on French domain names.

As regular Anchovy News readers may know, applicants for domain names registered under the .FR country code Top Level Domain (ccTLD) need to be based in the European Union, or in one of the following countries: Iceland, Liechtenstein, Norway and Switzerland.

As the United Kingdom has now left the EU, it is no longer possible for UK-based companies or individuals to register .FR domain names.

However, unlike EURid, the .EU domain name Registry, which has suspended over 81,000 .EU domain names held by UK-based registrants who had not updated their address to one in the EU (see our article in last month’s issue), AFNIC has not made this rule retroactive.

This is most welcome news for UK-based registrants of existing .FR domain names (registered before 1 January 2021) as they do not need to do anything and can therefore keep using their domain names and renew them as normal. They can also perform all operations on their domain names and transfer them to another entity, if they wish, as long as the eligibility requirements are fulfilled.

It is to be noted that the above concerns not only domain names registered under .FR, but also under the other ccTLDs managed by AFNIC, which are: .RE (Reunion), .YT (Mayotte), .PM (Saint Pierre and Miquelon), .WF (Wallis and Futuna), and .TF (French Southern Territories).

AFNIC and EURid are not the only European Registries facing the issue of Brexit. Registro.it, the Italian Registry, is also affected since an EU presence is required for .IT domain names. For the moment, the Registry has not made a decision about how to handle this and is still allowing UK based entities to register .IT domain names. It will be interesting to see what position it takes in the near future.

UK-based .EU domain name registrants get reprieve

As reported in Anchovy News last month, EURid, the Registry responsible for the .EU Top Level Domain (TLD), suspended over 81,000 .EU domain names held by UK-based registrants at the beginning of 2021, pursuant to the end of the UK’s 11-month Brexit transition period. These domain names were set to be “withdrawn” at the end of March 2021 and made available for re-registration in 2022, but EURid has now extended the deadline for compliance with the new rules to the end of June 2021.

In a press release issued on 8 February 2021, EURid noted that 8,000 of the suspended .EU domain names had already been reinstated and announced that the new deadline for withdrawal of the remaining suspended domain names would be 30 June 2021 instead of 31 March 2021. Domain names that are in the “withdrawn” status no longer function and are programmed for release in 2022.

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.

The number of .EU domain names held by UK-based residents has fallen from around 300,000 in 2017 to around 120,000 in the last quarter of 2020, so it is hoped that the extended deadline will help to stem this drop off by allowing registrants sufficient time to put measures in place to keep hold of their domain names.

Change brings new life to .PT

DNS.PT, the Registry responsible for the management of the country code Top Level Domain (ccTLD) .PT (Portugal), updated its registration rules on 2 February 2021. The new rules, which the Registry says make registering .PT domain names more accessible, resulted in the registration of more than one thousand domain names, the largest increase in a single day since the liberalisation of .PT in 2012.

The most important changes to the .PT Registration Rules are the following:

  1. The disappearance of a number of second level extensions, including .EDU.PT and ORG.PT, among others, leaving only .PT, .COM.PT and .GOV.PT. It should be noted, however, that any domain names already registered under one of the extensions that will no longer be available will continue to exist and can be renewed as normal.
  2. Two-character domain names no longer have special rules and will be treated in the same way as any domain name under .PT.
  3. The possible removal of domain names that host illegal or qualified content that fits the concept of DNS Abuse - malware, phishing, pharming, botnets and/or spam dissemination activities, following notification from the competent authority.
  4. A prohibition on registering domains using words or expressions contrary to the law and an agile and automated mechanism for the monitoring of registered domain names.

All of these changes to the registration rules came about further to extensive collaboration and discussion between partners and stakeholders. The new registration rules were then submitted for public comment with any suggestions and subsequent responses published. This procedure was something new for .PT and it was the first time in the history of the Registry that the revision of the Terms & Conditions had been done in this way.

Taking into account that there were 132,890 new domain name registrations in 2020 (which was the best year ever for .PT in terms of the number of new registrations), the 1,034 registrations effected in a single day after the new rules came into force represent not far off 1% of this. The total number of .PT domain names registered up until 2021 was 1,359,729.

In spite of the increased competition from the new gTLDs, .PT seems to be holding its ground and continues to be popular. Increased growth in 2020 was no doubt helped by the ongoing COVID pandemic and subsequent increased use of the Internet, so it will be interesting to see if this trend for growth can be maintained. To see the full . PT Terms & Conditions (registration rules) please click here.

Progress Report provides snapshot of .EU ecosystem 

EURid, the Registry responsible for running the .EU country code Top Level Domain (ccTLD), recently released its Q4 2020 Progress Report, which included its quarterly statistics for .EU.

At the end of Q4 2020, EURid recorded a total of 3,684,984 domain name registrations, which represented a net increase of 108,682 registrations (3%). EURid attributes these positive results to the high number of new registrations, some 268,296 domain names. EURid also noted that registrations by registrants based in Portugal had the highest growth at +64% during Q4 2020, followed by Ireland and Latvia with registration growth of 46.6% and 15.1%, respectively. In addition, EURid recorded an average domain name renewal rate of 81.7%

EURid also recently published the results of a survey undertaken in November 2020 during which it crawled 150,000 .EU domain names. The survey established that 82.5% of the 150,000 .EU domain names were connected to a web server, with 77,760 of these having rich content websites, i.e. web pages with different media formats (sound, video and images).

According to EURid, 10,000 .EU websites that had rich content were manually checked by the Italian social cooperative Opera In Fiore, based in Milan. Opera In Fiore undertook the manual checks using categorisation defined by CENTR (the Council of European National Top-Level Domain Registries) and based on the statistical classification of economic activities in the European Community, abbreviated as NACE (Nomenclature of Economic Activities). As a result, it was found that, of the 10,000 .EU domains, 17.6% were classified as being used for trade, 11.9% were associated with manufacturing and 8.7% of the domains were associated with community groups.

To visit EURid click here.

Domain name recuperation news

Complaint for ecourier.com fails to deliver

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a UDRP panel denied a UDRP Complaint for the disputed domain name ecourier.com, entering a finding of Reverse Domain Name Hijacking (RDNH).

The Complainant, Soft Trust Inc., was a Canadian company incorporated in 2004, and provided services related to the transfer of electronic communications (including electronic messages and files) as well as services related to remote access and sharing of electronic information. The Complainant had registered trademarks comprising the term "e-courier", including a Canadian trademark E‑COURIER (and design), registered on 25 January 2008, and a United States trademark E-COURIER.CA, registered on 9 December 2014. The Complainant had also been the registrant of the domain name e-courier.ca since 17 May 2005.

The disputed domain name was first registered on 3 December 1997 by the Respondent, Todd Hinton. The Respondent incorporated the Respondent company, Ikebana America LLC, on 11 May 2004. At the time of the decision, the disputed domain name resolved to a web page stating "Sorry! This site is temporarily unavailable." In the period between 2007 to 2011, a representative of the Complainant contacted the Respondent three times, offering to purchase the disputed domain name. The Respondent declined to sell the disputed domain name on all three occasions.

The Complainant asserted that the disputed domain name was confusingly similar to its E‑COURIER and E-COURIER.CA trademarks. The Complainant submitted that the Respondent had no rights or legitimate interests in the disputed domain name. The Complainant claimed that the message on the web page to which the disputed domain name resolved (that the site was temporarily unavailable) was misleading, and contradicted the longstanding passive holding of the disputed domain name by the Respondent, and that the Respondent's passive holding of the disputed domain name was seemingly to block the use of the disputed domain name by an owner of associated trademark rights. With regard to bad faith, the Complainant stated that it was unsure as to the exact date that the Respondent registered the disputed domain name, but that it had taken place at some point between 14 September 2005 and 17 December 2015, after the date that the Complainant had accrued rights in "E-COURIER". The Complainant further asserted that the Respondent had a history of acquiring and stockpiling domain names that appeared to be unrelated to any commercial or other activities of the Respondent. The Complainant claimed that a number of these domain names were the same or similar to trademarks that had been registered in the United States, or whose registration was still pending. The Complainant asserted that the Respondent had been aware of the Complainant and its rights in "E-COURIER" since at least 2012. The Complainant argued that the Respondent was using the reputation of the Complainant's trademarks to attract Internet users to the disputed domain name and thereby increase its value in the eyes of potential purchasers.

The Respondent claimed to have registered the disputed domain name on 3 December 1997, and noted that despite having changed registrars several different times, the Respondent had personally been listed as the registrant of the disputed domain name since its initial registration. The Respondent asserted that he had registered hundreds of domain names, and that all of the Respondent's domain names had been registered in good faith with the future expectation of developing them and that they were not held with malicious intent. The Respondent conceded that the disputed domain name was confusingly similar to the Complainant's trademarks. The Respondent asserted that he had made demonstrable preparations to use the disputed domain name in connection with a bona fide offering of goods or services, including by filing a trademark application in the United States for "ECOURIER.COM" in 2001, which was subsequently abandoned. The Respondent explained that he had been employed by FedEx since 1997, which had inspired him to register the disputed domain name, which in his mind was composed of a generic term connoting electronic courier, or an online delivery person. The Respondent submitted that the non-use of the disputed domain name did not demonstrate bad faith. The Respondent sought a finding of RDNH.

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 disputed domain name was confusingly similar to the textual elements of the Complainant's E-COURIER trademark, as well as the Complainant's E-COURIER.CA trademark.

Under paragraph 4(a)(ii) of the UDRP, the Panel found that there was no evidence that the Respondent had registered the disputed domain name to trade off the Complainant's rights. In fact, the Panel noted that the Respondent registered the disputed domain name in 1997, well before the Complainant had come into existence. The Panel found that it appeared that the Respondent genuinely planned to use the disputed domain name for a business related to the industry in which the Respondent was employed, as evidenced by the Respondent's trademark application for "ECOURIER.COM", and that the Respondent had since used the disputed domain name for email purposes. Further considering that the Respondent had refused all offers to purchase the disputed domain name, the Panel found that the Respondent had established rights or legitimate interests in the disputed domain name.

Under paragraph 4(a)(iii) of the UDRP, the Panel found that the disputed domain name was registered at least six years prior to the Complainant's incorporation. Accordingly, it was not possible that the registration of the disputed domain name could have been made in an attempt to target the Complainant's trademarks. The Complainant had therefore failed to prove registration in bad faith. The Panel further found that the Respondent's passive holding of the disputed domain name did not amount to bad faith. The Complainant had not provided sufficient evidence to demonstrate that its trademarks were widely known; the Respondent had provided evidence of actual or contemplated good-faith use of the disputed domain name; and there was no evidence of the Respondent's provision of false or misleading WhoIs information. The Panel added that there was no other evidence to support the claim that the Respondent had engaged in a pattern of registering domain names to target trademarks held by the Complainant or any third parties.

In entering a finding of RDNH, the Panel stressed that the Complainant should have been aware that the Respondent, Todd Hinton, and his company, Ikebana America LLC, were connected at the time that the Complainant submitted the Complaint to the Center. Indeed, there were several factors that supported such a conclusion that were submitted by the Complainant in evidence, and yet the Complainant persisted with the Complaint when it was evident that the disputed domain name had been under the control of the Respondent since 1997. The Panel also cited the Complainant's claim of having contacted the Respondent in 2012, and noted that the Complainant had omitted copies of its correspondence with the Respondent in 2008 from the Complaint. The Panel considered the Complainant's explanation of its history with the Respondent to be incomplete, and that the intentional omission of relevant evidence could justify a finding of RDNH. Finally, the Panel noted that the Complainant's allegation that the Respondent had registered the disputed domain name to sell it at a profit had no evidentiary support. Rather, the Respondent had never invited offers to purchase the disputed domain name, and had consistently rejected such repeat offers from the Complainant.

The above case highlights two important factors for prospective UDRP filers. First, while mere delay between the registration of a domain name and the filing of a UDRP complaint does not create any bar to filing, when preparing a UDRP complaint for an "older" domain name registration, complainants need to carefully consider whether there is an unbroken chain of registration between the creation of the disputed domain name, and the current registration. If it comes to light from readily-available information, despite updates to the WhoIs information, that the original registrant is substantively the same as the current registrant, the question of bad faith registration will be assessed at the time that the domain name was first registered. In cases where the creation of the domain name predates the accrual of trademark rights, it is typically simply not possible to prove bad faith registration of a domain name. Secondly, similar to the way in which it is incumbent on parties to litigation to disclose all documents that are relevant to issues that are in dispute to the other party, UDRP complainants are required to provide a complete and accurate record of material evidence, which may include pre‑complaint correspondence. Failure to do so may be interpreted as an attempt to mislead the panel, potentially exposing the complainant to a finding of RDNH.

The full decision is available here.

Bad faith registration claim defeated by panel’s research

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 shl-technologies.com, finding that the Complainant had failed to prove that the Domain Name had been registered and used in bad faith.

The Complainant was SHL Medical AG, a Swiss provider of drug delivery devices and systems and a contract manufacturer of complex medical and industrial products. The Complainant used the name SHL Technologies in connection with some of its services. In 2010, the Complainant registered European Union and Chinese trademarks for SHL TECHNOLOGIES. In addition, the Complainant owned the domain names shl-tech.com, shltech.com and shltechnologies.com which redirect to its website at shl-medical.com.

The Respondent was an individual based in Hong Kong who registered the Domain Name which, at the time of the UDRP proceedings, resolved to a parked page mentioning “this Domain Name is reserved for one of our clients”. From WhoIs records, it appeared that the Domain Name was registered on 1 September 2017. However, in correspondence between the parties prior to the UDRP proceedings, the Respondent declared that he had registered the Domain Name 15 years earlier for a company named SHL Technologies and that he would be willing to sell the Domain Name for EUR 42,500. The Complainant made a counter-offer of EUR 1,000 which was rejected by the Respondent.

On 28 September 2020, The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name. The Respondent did not reply.

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 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 the first element of paragraph 4(a) of the UDRP, the Complainant argued that the Domain Name was identical to its trademark SHL TECHNOLOGIES as it fully and solely consisted of such trademark. The Panel held that, due to the fact the Domain Name consisted of the SHL TECHNOLOGIES trademark, it was almost identical to the trademark and therefore the Complainant had satisfied the requirements of the first element.

With regard to the second element of paragraph 4(a) of the UDRP, the Complainant claimed that the Respondent had no rights or legitimate interests in the Domain Name as, based on searches by the Complainant, there was no proof that the Respondent had an active company named “SHL Technologies”, used the trade name SHL Technologies or owned a trademark registration for SHL TECHNOLOGIES. The Complainant considered that the Respondent was passively holding the Domain Name, that he had not made use of it and had no basis for charging EUR 42,500 for the transfer.

The Panel did not judge it necessary to address the question of the Respondent’s rights and legitimate interests because it concluded that the Complaint had failed on the third element.

With regard to the third element, the Complainant contended that the Respondent had registered and used the Domain Name in bad faith because (i) he had registered it after his bankrupt company was dissolved, (ii) he had not been using the Domain Name, (iii) he had no company named “SHL Technologies” and (iv) he had renewed the registration of the Domain Name because he was aware of the Complainant and he wished to sell it to the Complainant for profit.

In order to rule on the third element and in the absence of conclusive evidence, the Panel sought to determine (i) the actual date of registration of the Domain Name and (ii) whether the Respondent had exercised continuous control over the Domain Name over the 15-year period preceding the Complaint.

With respect to the registration date, the Panel noted that the then current WhoIs record indicated that the Domain Name was registered on 1 September 2017. The Panel also noted that, in the correspondence between the parties, the Respondent claimed to have registered the Domain Name for the last 15 years and to have had registered it for his company SHL Technologies. The Panel also noted that the Respondent had sent an undated brochure to the Complainant including information about the company, its history, products and services and entries that suggested the brochure was created after 2012. The brochure also made references to a website at the Domain Name and at shl-consultancy.com. The Company was apparently dissolved in December 2016. The Panel concluded that the evidence tended to suggest that the Respondent might have owned the Domain Name before the first registration of the SHL TECHNOLOGIES trademark.

With respect to the question of continuous control over the Domain Name, the Panel considered that, although the Complainant had not brought such evidence, the Panel had general powers and discretion, pursuant to paragraphs 10 and 12 of the UDRP Rules and for the benefit of the parties, to review the archival website page for the Domain Name through the Internet Archive and archival WhoIs records. The search confirmed that the Domain Name was in use with an active website for a company named SHL Technologies Group that was related to SHL Consultancy, operated in China and that designed and supplied custom-made moulded products from, at least, as early as October 2009 to March 2016. The search also revealed that SHL Consultancy & Trading B.V. was the registrant organisation and that the registrant name was very similar to that of the Respondent. It appeared to the Panel that the Domain Name may have expired in August 2017 and that it had been reregistered under the Respondent’s name and SHL Technologies on 1 September 2017. The Panel concluded that there was indeed a company named SHL Consultancy & Trading B.V. that operated a website at the Domain Name using the name SHL Technologies Group before the Complainant acquired trademark rights in SHL TECHNOLOGIES. The Panel concluded that the Respondent started controlling the Domain Name before registration of the Complainant’s trademark and that he had continuously controlled it since.

As regards the Complainant’s claim that the Respondent had re-registered the Domain Name because he was aware of the Complainant and in order to sell it to the Complainant for profit, the Panel held that the Complainant had failed to provide evidence that the Respondent had specifically targeted it as opposed to merely registering a domain name that he had owned and used for many years and that had likely been re-registered after it had expired. The Panel pointed out that the EUR 42,500 request was made after the Complainant had contacted the Respondent for transfer of the Domain Name, and added that the fact that the Respondent had re-registered a domain name that he was associated with for at least eight years, less than a month after expiry, did not, in itself, mean that the Respondent had registered it to take advantage of the Complainant’s rights in its trademark.

As a consequence, the Panel found that the claim had failed on the third element and the Complaint was denied.

This case shows that, where evidence is publicly available, it is in the interests of the party seeking transfer of the domain name to thoroughly explore it to identify any elements that could substantiate or invalidate the party’s assertions, as the Panel is authorised to perform such searches and may do so to assist in deciding the case. As explained in the WIPO Overview 3.0 at section 4.8, a Panel may undertake limited factual research into matters of public record if it would consider such information useful to assess the case merits and reach a decision.

The decision is available here.

No cybersquatting, no jurisdiction

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 igroutka.net, finding that WIPO was not the appropriate forum to settle the dispute at hand.

The Complainant was Aleksandr Danilchuk, an individual who was the registrant of the disputed domain name between June 2016 and July 2020. The disputed domain name originally resolved to a website offering various online games and displaying advertisements. The website was called „ИгроУтка – бесплатные онлайн игры“ (which translates as “IgroUtka – free online games”). The Complainant had no registered trademark but asserted that he had unregistered trademark rights in IGROUTKA as a result of his use of the website and the high number of visitors.

The Respondent was initially identified as a privacy service. The registrar then disclosed the registrant information and identified Vadym Didenko as the Respondent. The Respondent was recorded as the registrant of the disputed domain name in July 2020. At the time of the proceedings, the domain name resolved to a website similar to the initial one, featuring various online games and advertising.

The Complainant asserted that the disputed domain name was stolen from him in July 2020 by someone who presented forged copies of the Complainant’s identity papers to the registrar. Moreover, according to the Complainant, the account relating to the contact email address provided for the domain name registration had also been hacked.

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.

The Complainant made various arguments under all elements of the UDRP in support of his claim, and the Respondent countered by providing various documents. However, the Panel did not address the parties’ contentions under the three elements in any detail and instead considered the issue of whether this dispute was within the scope of the UDRP. The Panel underlined the fact that the UDRP was initially designed to combat cybersquatting, but in fact this case dealt with the question of who was the rightful owner of the domain name and whether the Respondent had acquired it legitimately or through forgery and theft. According to the Panel, the UDRP was not designed for this type of case, and as such it was not the appropriate forum for the dispute. As a result the Complaint was dismissed, although the Panel made it clear that this in no way restricted the Complainant’s ability to pursue the matter before the courts of competent jurisdiction.

This decision is a reminder of the purpose as well as the limits of the UDRP. As underlined by the Panel in this case, the UDRP’s core purpose is to combat cybersquatting. The dispute resolution mechanism set forth by the Policy does not provide for classic procedural methods aimed at ensuring due process such as hearings or cross-examination. The standard of proof is also lower than what would be required by most national courts in order to establish fraud or theft. As such, disputes involving accusations that go beyond cybersquatting may not be settled under the UDRP and parties must resort to the appropriate national jurisdiction.

The full decision is available here.