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, including: .FR reaches the 4 million milestone; .AU direct domains see strong post-launch take-up; .IE Domain Profile Report for 2022, Strong performance for .PT.
Domain name recuperation news, including: The UDRP deals with confusingly similar domain names, not email addresses; Prior business relationship prevents a dispute from being actionable under the UDRP; No rights or legitimate interests, but also no bad faith.
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
.FR reaches the 4 million milestone
AFNIC, the Registry operating the country code Top Level Domain (ccTLD) .FR for France, announced in December that it had reached the milestone of 4 million registered domain names. They explain this as being by virtue of the fact that .FR is a reliable, secure and trusted ccTLD.
According to AFNIC’s announcement, .FR has a market share in France of almost 40%, a figure which is growing every year, and between 12,000 et 16,000 new .FR domain names are registered each week. Over half of the French small and medium-sized companies with a website have opted for a domain name under the .FR extension, which they say is easy to register in and cheap. As a reminder, to register under .FR, applicants need to be based in the European Union or in any of the following countries: Switzerland, Norway, Island and Liechtenstein.
AFNIC highlights the reliability and security of the ccTLD, notably in terms of information systems security management and in terms of data protection for individuals. The Registry also stresses that its priority is to maintain a trustworthy space by fighting all kinds of domain name abuse, which is why they offer various online tools to report abuse and deal with infringement, as well as two domain name dispute resolution services – SYRELI and PARL-EXPERT.
On this note, AFNIC has recently opened a public consultation on a new project in order to expand the possibilities for resolving domain name disputes. According to their recent announcement on this, they “wish to study the possibility of implementing a new procedure, free of charge, for the amicable resolution of disputes, by opening a mediation service”. The consultation will close on 23 March 2022 and the full details are available here.
It is worth noting that all the existing services previously mentioned are also available for domain names registered under the other ccTLDs run by AFNIC for the following French overseas territories: Reunion Island (.RE), Saint Pierre and Miquelon (.PM), Mayotte (.YT), the French Southern Territories (.TF). and Wallis and Futuna (.WF).
According to the latest Verisign Industry Brief published in December, .FR is the 8th ccTLD worldwide in terms of volume of domain name registrations, behind .CN (China) with around 18 million domain names, .DE (Germany) with around 17.3 million, and .UK (United Kingdom) with around 11.1 million, which are the top three ccTLDs.
For more information on the registration or recuperation of domain names under .FR or under any other ccTLDs, please contact David Taylor or Jane Seager.
.AU direct domains see strong post-launch take-up
auDA, the Australian domain name Registry, has reported robust growth and a strong take-up of .AU direct domain names since the launch of the .AU 2nd Level Domain (2LD) in March 2022.
By way of a recap, auDA launched a Priority Allocation Process for .AU direct domain name registrations on 22 March 2022. Under this, the holders of Australian third-level domain names such as .COM.AU and .NET.AU who met the strict local presence requirements had priority to apply for the corresponding domain names directly under the .AU 2LD until 20 September 2022. After this date, all names matching existing domain names registered in other extensions were released for registration by any registrant with a valid Australian presence.
auDA’s Q4 2022 Annual Report shows that over 716,000 .AU registrations were registered since the launch of the 2LD.
The Annual Report records the Registry as having 4,160,209 domains overall at the end of December 2022, a figure which represents a 22% increase year-on-year. The Registry also saw a whopping 123% increase in registrations year-on-year in Quarter 4, a bounce that was no doubt linked to the end of the Priority Allocation Period for .AU direct domains on 20 September 2022 and the subsequent general availability of the 2LD. Based on the above figures around one in six .AU domain name registrations is now held in the new .AU 2LD.
auDA Chief Executive Officer Rosemary Sinclair stated of the availability and uptake of the new 2LD that:
It has delivered an innovative, new option for registrants, in particular for not-for-profits and individuals. This strong community take-up demonstrates ongoing trust and confidence in the .au – an area of strategic focus for auDA.
It will be interesting to see whether the Registry can maintain strong growth when the dust from the .AU launch has settled.
For more information on .AU domain names, please contact David Taylor or Jane Seager.
.IE Domain Profile Report for 2022
The Irish Registry, which is responsible for running Ireland’s .IE country code Top Level Domain (ccTLD), has recently published its 2022 report which contains an analysis of domain name registrations under .IE and an overview of the .IE namespace.
The .IE Domain Profile Report highlighted, amongst other things, that new domain name registrations under .IE decreased by 22.6% in 2022, in comparison to 2021. The .IE Registry believes that this “cooling off” is quite natural coming as it does after the surge in domain name registrations during the Covid period, when businesses took proactive steps to get online during the pandemic restrictions.
However, according to the Report, there were 48,168 new registrations in 2022, which represented a decrease of 4% even in comparison to pre-pandemic 2019, so the decrease cannot be explained solely with reference to the pandemic. Coupled with a drop in the rate of domain name renewals, the Report documents “overall flat growth” for 2022.
At the end of 2022 there were approximately 330,000 registered .IE domain names, which represented a 0.3% decrease in comparison to 2021. This relatively low figure is explained by the fact that the .IE ccTLD is restricted to entities which are either based in Ireland or have a link with Ireland (via their business or a trade mark), contrary to most European ccTLDs, which are generally less restricted. Unsurprisingly, the report showed that 91% of all registered .IE domain names had been registered by Irish entities, and .IE domain names represented 53.6% of all domain names hosted in Ireland, ahead of other extensions such as .COM (30%), .UK (7.4%), and .EU (2.3%).
The Report also focused on cybersecurity and the additional layer of security the Registry has provided to .IE domain name owners. The Registry uses an Internet security services company to scan for online abuse such as malware, phishing or botnets. When detected, the relevant registrar is notified, and they can in turn inform the domain name holder of the abuse so that corrective action may be taken. As a result of this cybersecurity service, the report noted that 514 cyber-attacks were taken down in 2022, 40% of which were phishing attacks and 24% of which were malware attacks.
The Report also stated that 60% of content-rich .IE websites were secured with a security certificate, although this represented a decrease of 6% when compared to 2021. There were also 757 .IE domain names which were secured with DNSSEC, an increase of 51% since 2021, and 57 .IE domain names were secured with a Registry Lock, an increase of 19% in 12 months.
Lastly, and somewhat unusually, the Registry manually checks all .IE domain name applications. The Registry believes that these manual checks also help protect against “bad actors” registering .IE domain names to be used for fraudulent and illegal activities.
For more information on .IE domain names, please contact David Taylor or Jane Seager.
Strong performance for .PT
DNS.PT, the organisation responsible for overseeing the country code Top Level Domain (ccTLD) .PT (for Portugal), recently published an article on its website about the growth of .PT over the past year.
The .PT Registry reported that there had been 150,525 new domain name registrations in 2022, which represented an increase of 10% over the previous year and corresponded to an increase of 13,604 domain names.
During 2022, the months of March and October (with 15,612 and 15,656 new domain name registrations respectively) confirmed the continued strong growth of domain names under .PT. In the second half of 2022 alone there were nearly 76,000 new domain name registrations under .PT, which represented an increase of more than 12,435 domain names or 20% over the same period in 2021.
Luisa Ribeiro Lopes, Chair of the .PT Board of Directors for DNS.PT, is quoted in the article as saying "the number of registrations achieved this year surpasses the results of the pandemic years, which were the best ever”. To this, she added:
"the numbers leave us very satisfied and consolidate the work that .PT develops, whether in promoting a secure and more reliable internet, or in the area of digital training and inclusion. The .PT domain has been growing consecutively for ten years, assuming itself as a true case of success among European domains”
According to the latest Global TLD Report published by the Council of European National Top-Level Domain Registries (CENTRstats), average growth amongst European ccTLDs was 2%, so .PT with 10% has performed strongly. At the time of writing, the total number of registered .PT domain names is over 1,66 million.
For more information on .PT domain names, please contact David Taylor or Jane Seager.
Domain name recuperation news
The UDRP deals with confusingly similar domain names, not email addresses
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 for the disputed Domain Name visasdept.com, finding that the Complainant had failed to prove that it was identical or confusingly similar to the Complainant’s trade marks.
The Complainant was VFS Global Services PLC, a British company providing services relating to the filing and processing of visa applications in numerous countries worldwide since 2001. The Complainant owned various trade marks for VFS or VFS GLOBAL in numerous jurisdictions including India, New Zealand, Mexico and the United States of America.
The Respondent was an individual based in the United States of America (according to the underlying WhoIs information).
The Domain Name was registered on 30 March 2022. Although it did not resolve to an active website, the Respondent had been using the Domain Name to send emails, having created the email address: “[email protected]”.
A person acting on behalf of the Complainant had contacted the Respondent for information about visas in Canada using the email address and was directed to a website to make a payment of INR 15,500 for a visa. The landing page of this website presented itself as being a payment to one of the Complainant’s group companies. However, the Complainant underlined that this website was not its website and nor was it authorised to take payments on the Complainant’s behalf. The Respondent did not file any response.
In order to prevail, a complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the UDRP:
(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 the disputed domain name; and
(iii) The disputed domain name was registered and is being used in bad faith.
As far as the first limb is concerned, a complainant must first demonstrate that it has rights in a trade mark and, secondly, that the disputed domain name is identical or confusingly similar to such trade mark.
The Panel found that the Complainant had proved ownership of multiple trade marks in VFS and VFS GLOBAL. However, with regard to confusing similarity, the Complainant contended that the Respondent’s email address, “[email protected]”, created confusion and made it appear as though the Domain Name may be related to the Complainant. The Complainant also argued that the Respondent had used the Domain Name to create a fraudulent email address.
In this regard, although the Panel accepted that the email address was likely to create confusion with the Complainant’s trade marks, it stressed that the UDRP was concerned with “the abusive registration of domain names, not email addresses”. The Panel noted that the Domain Name visasdept.com was required to be identical or at least confusingly similar to the Complainant’s trade marks, VFS or VFS GLOBAL, in order to establish the first requirement under the UDRP. The Panel further observed that, disregarding the “.com” gTLD, the expression “visasdept” was not similar enough to the Complainant’s trade marks.
The Panel underlined that the UDRP was limited to resolving disputes about the registration of abusive domain names and therefore found that the Complainant had failed to establish that the disputed Domain Name was confusingly similar to the Complainant’s trade mark rights.
As the Complainant had failed to demonstrate that it had satisfied the first requirement under the UDRP, the Panel denied the transfer of the disputed Domain Name “with very considerable reluctance” without examining the other requirements.
The present case underlines that the UDRP is limited to resolving disputes about abusive domain names and not email addresses per se. While an email address created for fraudulent purposes may be persuasive evidence to demonstrate that a respondent is targeting a complainant’s trade marks, the disputed domain name itself has to be identical or confusingly similar to such trade marks in order to obtain a transfer order under the UDRP.
Brand owners confronted with such a situation, where a confusing email address has been used for malicious activities, but the domain name used to create it is not confusingly similar to their trade marks, may consider bringing this to the attention of the relevant domain name registrar, taking care to attach conclusive evidence of criminality. In certain circumstances, in particular when presented with clear proof of fraudulent behaviour, registrars may feel that it is appropriate to suspend the domain name at issue. This will prevent it from being used, both to send emails and/or to point to a website.
The decision is available here.
Prior business relationship 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 parisonstudio.com (the disputed Domain Name). The Panel found that the dispute did not fall within the scope of cybersquatting which the UDRP was designed to resolve; rather, it was closer to a contractual dispute. In any event, the Panel found that the Complainant did not enjoy common law rights in the claimed trade mark and so did not have standing to bring the Complaint.
The Complainant, Shoreman's Daughter LLC DBA Glass Eye Studio, was a US company that promoted and distributed hand blown artisan glass. The Complainant claimed to have promoted its services through various names including "Parison Studio", "Glass Eye Studio", and "Idlewild Union Studio" since 2019, but did not own any registered trade marks for "Parison Studio".
The disputed Domain Name was registered on 20 April 2019. At the time of filing the Complaint, the disputed Domain Name resolved to a website that featured use of "Parison Studio". The decision does not provide any further details as to the pointing.
The Respondent was a member of the Complainant company between 2017 and September 2022. On or around September 2022, a business dispute arose between the Complainant and the Respondent and the other members of the company, evidenced by multiple letters from the Complainant to the Respondent in relation to a variety of business issues.
To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements:
- 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
- The respondent has no rights or legitimate interests in respect of the domain name; and
- The domain name has been registered and is being used in bad faith.
The Complainant argued that it enjoyed unregistered or common law rights in the trade mark "Parison Studio" by virtue of its use since 2019 in promoting the services and work product of both "Glass Eye Studio" and "Idlewild Union Studio" and that the disputed Domain Name was identical or confusingly similar to its trade mark rights. The Complainant also submitted that the Respondent had no rights or legitimate interests in respect of the disputed Domain Name and that it registered and used the disputed Domain Name in bad faith.
The Respondent disputed the Complainant's claims under each of the UDRP elements. It submitted that if any party held trade mark rights for "Parison Studio" it would be the Respondent, and furthermore such rights had been created with the Complainant's knowledge (and tacit approval that such rights were independent of the Complainant's business).
To establish common law trade mark rights for the purpose of paragraph 4(a)(i) of the UDRP, a complainant must show that its claimed trade mark has become a distinctive identifier that consumers associate with its goods or services. To show this, a complainant must provide specific evidence on a range of factors including the duration and nature of its use of the trade mark, the amount of sales it made under the trade mark, the nature and extent of advertising and the degree of actual public recognition enjoyed in relation to the trade mark.
The Panel found that the Complainant had not presented sufficient evidence in support of its claimed common law rights in the trade mark for the Panel to conclude that it held such common law rights. Rather, the Complainant had made only conclusory and unsupported assertions that it had used the trade mark PARISON STUDIO in connection with its goods or services and had provided only "scant evidence" of use of the trade mark.
The Panel considered in some detail the reasons why the evidence provided by the Complainant was insufficient to support its claim of common law rights, noting that:
- The Complainant relied heavily on an email chain with a prospective customer in 2022 to show use of the trade mark, yet nowhere in that chain was there reference to the trade mark in relation to the provision of, or intention to provide, goods or services.
- The Complainant argued that in early 2021 it had a website located at the disputed Domain Name that promoted artists' creations under the name 'Parison Studio', but provided no evidence supporting this assertion. The Panel consulted the Internet Archive in accordance with its general powers under the UDRP Rules. The only result was dated 10 December 2021, which showed that the disputed Domain Name resolved to a Registrar parking page.
- The Complainant asserted that a LinkedIn page had been set up in 2019 to promote its services under the PARISON STUDIO trade mark. However, the Panel found that the screen capture of the LinkedIn page provided by the Complainant did not feature the trade mark or mention the services in connection with which it was purportedly used. Moreover, the ownership of the LinkedIn page was disputed, as the Respondent also claimed that it had created the page.
The Panel rejected the Respondent's claim that it had unregistered rights in the PARISON STUDIO trade mark. The Panel noted that the Respondent relied on the same evidence of use of the trade mark as the Complainant and found that such evidence was insufficient to demonstrate the Respondent's common law rights in the trade mark.
The Panel rejected the Respondent's additional claim, which it found was unsupported by evidence, that the Respondent's company "EVI Studios LLC" operated under the name 'Parison Studio'. The Panel found that, although at the time of filing the Complaint the website to which the disputed Domain Name resolved showed use of the term 'Parison Studio', there was nothing to suggest that this name had become a source identifier for the Respondent or its company.
Before reaching its decision, the Panel noted that it had not been provided with a copy of the Operating Agreement between the Parties, which was referred to in inter partes correspondence. The Panel noted that this agreement may have had a material impact on the Parties' assertion of rights in the term 'Parison Studio'.
The Panel denied the Complaint and found that on the facts, in particular the pre-existing relationship between the Parties and the conflicting statements on the record, this case did not fall within the scope of cybersquatting which the UDRP was designed to resolve. Rather, the Panel noted that this case may be better suited to a contractual claim in a court with discovery/disclosure and cross-examination.
This decision underlines that a UDRP panel is not a general domain name court and that the UDRP is narrowly crafted to apply to a particular type of abusive registration arising from cybersquatting. This decision also makes it clear that a complainant who seeks to rely on unregistered or common law trade mark rights should adduce specific evidence on a range of factors, including but not limited to the duration and nature of use of the trade mark and the amount of sales under the trade mark, rather than simply relying on conclusory and unsupported assertions. If it fails to do so, a complainant seeking to rely on unregistered trade mark rights will be unlikely to have standing to bring a complaint under paragraph 4(a)(i) of the UDRP.
The decision is available here.
No rights or legitimate interests, but also no bad faith
In a recent decision under the .AU Domain Name Dispute Resolution Policy (.au DRP) before the World Intellectual Property Organization (WIPO), a Panel refused to order the transfer of a domain name that fully incorporated the Complainant's trade mark because the Complainant failed to prove that the Respondent registered or used the Domain Name in bad faith. .AU is the country-code Top Level Domain (ccTLD) for Australia.
The Complainant was Liquor Marketing Group Ltd, Australia, an alcohol marketing company that was incorporated in 1977. It had been operating its business under the lmg.com.au domain name since October 2008. The Complainant was also the owner of an Australian trade mark in the term LMG, which was filed on 11 April 2016.
The Respondent was Leo Mark Grogan, an individual based in Australia.
The Domain Name was lmg.net.au. The Respondent appeared to have registered the Domain Name around 17 July 2011 as an acronym for "Leo Mark Grogan". At the time the Complaint was filed, the Domain Name was not resolving to an active website.
To be successful in a complaint under the .au DRP, 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 name, 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 or subsequently used in bad faith.
As far as the first limb was concerned, the Panel agreed with the Complainant, considering that the Domain Name fully incorporated the Complainant's LMG trade mark and thus that the Domain Name was identical to the Complainant's trade mark. Therefore the Complainant satisfied the first element set out in paragraph 4(a) of the .au DRP.
Turning to the second requirement, and the Respondent's rights or legitimate interests (or lack of them), a complainant must prove that a respondent has 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 .au DRP.
Paragraph 4(c) of the .au DRP lists three non-exhaustive examples of ways in which a respondent may establish rights or legitimate interests in a domain name, as follows:
"(i) before any notice to you of the subject of the dispute, your bona fide use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services (not being the offering of domain names that you have acquired for the purpose of selling, renting or otherwise transferring); or
(ii) you (as an individual, business, or other organisation) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
(iii) you are making a legitimate non-commercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the name, the trademark or service mark at issue."
In the case at hand, the Panel found that the Complainant had made a prima facie showing that the Respondent lacked rights or legitimate interests in the Domain Name, given that the Complainant had rights in a trade mark which preceded the Respondent’s registration of the Domain Name. The Domain Name was not currently being used in connection with an active website created by the Respondent, although the Panel noted that the Respondent was able to send emails from an email address using the Domain Name.
Concerning whether or not the Respondent had been able to rebut the Complainant’s prima facie showing, the Panel underlined that the Respondent had not produced any evidence to establish that it had rights or legitimate interests in the Domain Name. It appeared from the file that (i) the Respondent’s initials were LMG, standing for Leo Mark Grogan, (ii) the Respondent initially operated its business under the name LMG Training, subsequently renamed Real Estate Property Training Services and (iii) the Respondent was a director of a business named LMG Commercial Property Services Pty Ltd, but this company was no longer registered.
The Panel explained that the appropriate time to assess whether a respondent had rights or legitimate interests in a disputed domain name was the date it became aware of the relevant dispute. In this case, the date at issue was 9 November 2022, the date that the Complainant’s solicitors wrote to the Respondent. However, the Panel also stressed that if there were any prior rights or interests that no longer existed at the time that a respondent was made aware of the dispute, those “expired” rights or interests would not assist a respondent establish rights or legitimate interests in the domain name for the purposes of the .au DRP.
In this regard, the Panel found that before the Respondent was made aware of the dispute, he had used the term LMG as part of the business name LMG Training in connection with the provision of training services, but that use had ceased. In addition, it appeared from the Australian Securities and Investments Commission (ASIC) that the company LMG Commercial Property Services Pty Ltd ceased being registered more than two years before. According to ASIC records, the Respondent was still the owner of the business name registration "LMG Training", but the Panel found that the Respondent’s continued registration of a business name which incorporated “LMG” did not show bona fide use and did not mean the Respondent was commonly known by this name where there was no evidence that a business now operated under it. Finally, there is no evidence before the Panel that the Respondent was commonly known by LMG, or by his initials, or by his former business names, and there was no evidence that his Twitter account (@LMGTraining) had been used since 2018.
The Panel therefore found that the prima facie case established by the Complainant had not been rebutted and so the Complainant had succeeded in establishing that the Respondent had no rights or legitimate interests in the Domain Name.
The Panel then addressed the issue of whether the Domain Name was registered or subsequently used in bad faith.
With regard to bad faith registration, the Panel noted that the Complainant did not allege that the Domain Name had been registered in bad faith, presumably because, at the time that the Domain Name was registered, the Respondent was associated with the company LMG Commercial Property Services Pty Ltd.
Instead, the Complainant relied on paragraph 4(b)(ii) of the Policy, which stated that:
"[…] the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith:
(ii) you have registered the domain name in order to prevent the owner of a name, trademark or service mark from reflecting that name or mark in a corresponding domain name; […]"
The Panel noted that the focus of paragraph 4(b)(ii) was the time of registration, and it raised the issue of the Respondent’s motivation for registering the Domain Name. However there was no evidence that the Respondent had knowledge of the Complainant in 2011, and even if the Respondent had such knowledge, there was no evidence that the Respondent registered the Domain Name in order to prevent the Complainant from using LMG in a corresponding domain name. In the Panel’s opinion, it was most likely that the Respondent registered the Domain Name because it reflected his initials and the name of his company. Without more, it was not bad faith for the Respondent to have continued to own (but not use) the Domain Name after having been put on notice of the Complainant’s trade mark rights.
In conclusion, the Panel found that the Respondent had owned the Domain Name for over 10 years. There was no evidence that the Respondent had tried to sell it at any time, or use it to disrupt the Complainant’s business (or in fact used it at all, other than in his email address). The Respondent and the Complainant were not in the same line of business and there was no suggestion of consumer confusion. In light of this, the Panel found that there was no evidence that the Domain Name had been used in bad faith and the Complaint was therefore denied.
This decision is rather unusual because the Panel found that the Respondent had no rights or legitimate interests in the Domain Name, but that it had not been registered or used in bad faith. More often than not, if a respondent has no rights or legitimate interests, a finding of bad faith will follow, and the two often go hand in hand. However, this is not always the case because Panels will assess whether or not a respondent can be said to have rights or legitimate interests in the present, in other words when the respondent became aware of the dispute or when the complaint was filed. While the Respondent in this case may have previously had rights or legitimate interests in the Domain Name, the fact that the relevant use had ceased meant that they no longer existed. However, this had no bearing on the Panel’s finding in relation to bad faith, as bad faith is assessed on different grounds.
The decision is available here.