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This is the September 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: Launch of .BOO and .RSVP, .DE continues to grow, .GAY celebrates its second anniversary
Domain name recuperation news, including: Inserting “porn” within a trade mark fails to eliminate confusing similarity, Complainant makes a false step, UDRP panels should not “plug the information gap”
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
Launch of .BOO and .RSVP
The Google domain name Registry, which runs several new generic Top Level Domains (gTLDs) including .APP, .DEV, .PAGE and more recently .DAY, is soon to launch another two new gTLDs: .BOO and .RSVP. Both new gTLDs were delegated by the Internet Corporation for Assigned Names and Numbers (ICANN) in 2014.
Google Registry advertises .BOO as “a fun and memorable domain that’s also secure” for those who are “building a website for love, laughs, or a surprise”. As for .RSVP, Google advertises it as “a secure domain for events and reservations”, “a memorable domain that helps guests confirm their plans with you”.
Both new gTLDs are secure namespaces, meaning that HTTPS is required for all .BOO and .RSVP websites. Therefore an SSL certificate will need to be obtained by the registrants so that all their .BOO and .RSVP domain names can resolve in browsers.
Both new gTLDs follow the same launch schedule, as follows:
During this period, trade mark holders who have registered their trade marks with the Trade Mark ClearingHouse (TMCH) will be available to apply for the corresponding domain names under .BOO and .RSVP.
During this period, available .BOO and .RSVP domain names can be registered by anyone on a first come, first served basis for an extra fee, which will decrease leading up to General Availability.
As from this date, anyone will be able to register available .BOO and .RSVP domain names on a first come, first served basis, at the regular price.
For more information on the launch of .BOO and .RSVP, please contact David Taylor or Jane Seager.
DE continues to grow
DENIC, the Registry responsible for managing the country code Top Level Domain (ccTLD) .DE (for Germany), recently published its Activity Report for the year 2021, which showed that the number of domain name registrations under .DE has exceeded 17 million.
According to the Report, as of 31 December 2021, there was a total of 17,160,504 .DE domain names registered. Of this number, 15.4 million domain names were registered to an individual or a company residing in Germany, which represents 90.12% of the total number. The remaining 1.7 million domain names were registered to holders residing outside of Germany, representing 9.88 %. Of those holders residing abroad, three quarters were located across the following ten countries:
United States (21%)
Netherlands (13%)
Russian Federation (9%)
Austria (9%)
Switzerland (5%)
Great Britain (5%)
Portugal (5%)
United Arab Emirates (4%)
Vietnam (3%)
France (2 %)
Even though the current economic climate is challenging, these figures indicate that growth continues to be strong for .DE, with 460,000 new domain names registered in 2021, representing an increase of 2.8%. In comparison, there was an increase of 376,000 in registrations in 2020, which represented an increase of 2.3%.
In terms of global performance, as of June 2022, .DE remained the third most popular ccTLD behind .TK (Tokelau) with 26.13 million domain name registrations and .CN (China) with 25.15 million.
The top ten ccTLDs with the most domain name registrations (in millions) as of June 2022 was as follows:
Tokelau (.TK) – 26.13
China (.CN) – 25.15
Germany (.DE) – 22.88
United Kingdom (.UK) – 19.6
Russian Federation (.RU) – 10.63
Gabon (.GA) – 8.6
Central African Republic (.CF) – 7.14
Mali (.ML) – 7.02
Netherlands (.NL) – 6.56
Brazil (.BR) – 5.52
It should be noted that the presence of some rather unlikely-sounding countries in the list above is not due to the exceptional popularity of ccTLDs in those countries, but to the fact that some may be registered at no or little cost.
Should you require further information in relation to .DE domain names, please contact David Taylor or Jane Seager.
.GAY celebrates its second anniversary
.GAY has recently celebrated its second anniversary and the Registry for .GAY, Top Level Design, has recently released its second Annual Impact Report.
One of Top Level Design’s aims for .GAY is to “uphold, fund, and celebrate LGBTQ+ communities” and in so doing, “create a brand culture that LGBTQ+ organizations, individuals, brands and companies see as valuable.” Top Level Design also aims to make the Internet “a safer and gayer place”. As such, they introduced a “.gay Rights Protection” policy, pursuant to which the Registry will accept reports of any content associated with .GAY domain names that is harmful or incites hatred towards LGBTQ people and to take the appropriate action, including suspending, placing on server-hold, revoking, or cancelling registrations at its sole discretion.
To date, over 17,000 .GAY domain names have been registered by individuals and companies. In addition, 20% of the revenue from every new domain registration is donated to organisations such as GLAAD and CenterLink, both of which support the LGBTQ community. According to the Impact Report, more than USD 167,000 has been raised and donated to these LGBTQ+ community beneficiaries.
The Impact Report also highlights the impact of the .GAY brand, as an estimated 588 million people were reached via Top Level Design's social media channels and influencer partnerships during 2021. Additionally, the Registry’s “library”, which allows anyone to access and learn, among other things, about “crucial events in gay history, gay heroes and icons past and present”, is streaming into “250 million homes worldwide” via the Revry TV platform.
Ray King, the CEO of Top Level Design, writes in the Impact Report that “[n]ow more than ever, LGBTQ+ visibility, community connection, and the distribution of health information is paramount. We’re proud to amplify representation and foster digital Pride by broadly sharing .gay with the world. We’ve already seen incredible interest and support from Fortune 100 companies and small businesses to LGBTQ+ brands and public figures, with over 20,000 .gay domain names registered to date.”
Should you require further information in relation to .GAY domain names, please contact David Taylor or Jane Seager.
Domain name recuperation news
Inserting “porn” within a trade mark fails to eliminate confusing similarity
In a recent decision under the Uniform Domain Name Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel cancelled the domain name onlypornfans.me, finding that the Complainant had satisfied all the requirements under the UDRP.
The Complainant was Fenix International Limited, a U.S. company operating a media platform at ‘www.onlyfans.com’ enabling users to post and subscribe to audiovisual content. The Respondent was an individual.
The disputed domain name, onlypornfans.me, was registered in March 2021. When the Complaint was filed it resolved to a website providing adult entertainment services.
To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements under paragraph 4(a):
(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 regard to the first limb, the Complainant argued that it had trade mark rights since 2019 in the term ONLYFANS in the European Union and the United States, as well as in the term ONLYFANS.COM in the United States. The Complainant also contended that inserting the term "porn" in the disputed domain name did not avoid confusing similarity with its trade mark.
The Respondent defended his position under all three limbs of the UDRP in an informal email in which he stated:
"Hello, Domain. Trademark – onlyfans.com only_RANDOM_WORD_fans is not a trademark Thank you"
The Panel found for the Complainant, noting that the disputed domain name was confusingly similar to the Complainant’s trade marks ONLYFANS and ONLYFANS.COM, as the term ONLYFANS was included in its entirety in the disputed domain name. The Panel also considered that the inclusion of the additional term "porn" between "only" and "fans" did not prevent a finding of confusing similarity. The Panel therefore found that the Complainant had satisfied the first limb.
Under the second element of the UDRP regarding the Respondent's rights or legitimate interests, the Complainant stated that the Respondent had no connection nor affiliation with the Complainant. Moreover, the Complainant underlined that it had not authorised the Respondent to use the trade mark in question and the Respondent had been using the disputed domain name to offer similar goods and services, thus creating a risk of implied affiliation.
The Panel found that the use of the disputed domain name to host a commercial website providing similar services in competition with the Complainant’s business did not give the Respondent rights or legitimate interests. The Panel also stated that such services did not represent a bona fide offering. Therefore, the Panel made a finding that the Complainant had successfully satisfied the second element of the UDRP.
With regard to the third limb, the Complainant contended that the Respondent had registered and used the disputed domain name in bad faith, given that it was registered long after the Complainant had obtained its ONLYFANS trade mark. Furthermore, the Complainant argued that the disputed domain name was being used to offer competing goods and services.
The Panel also found for the Complainant under this limb. The Panel stated that the Respondent must have been aware of the Complainant's rights given the popularity of the Complainant's services and products among the relevant public. The Panel added that the Respondent's bad faith was further underlined by the insertion in the disputed domain name of the term "porn", which clearly referred to the Complainant's services. The Panel also noted that the Respondent’s use of the disputed domain name to point to a commercial website combined with the Respondent's failure to respond to the Complainant's cease-and-desist letter and to submit a formal response, affirmed its finding of bad faith. In light of above, the Panel made a finding that the disputed domain name had been registered and used in bad faith, and the Complainant had therefore proved the requirements of the third limb of the UDRP.
Comment
The decision serves as a reminder that the addition of a descriptive word to a trademarked term may not be sufficient to distinguish the Complainant's rights from the disputed domain name. This holds true regardless of the placement of such term, whether as a prefix, a suffix, or indeed inserted anywhere between the various words of a trade mark.
In addition, this decision also underlines that a respondent's failure to provide a comprehensive explanation as to the registration and use of a disputed domain name may constitute one of the reasons for a finding of bad faith. Having said that, it should be stressed that the absence of a response to a cease and desist letter, or the failure to submit a formal response during the UDRP proceedings, will not always be treated by the Panel as an indication of bad faith.
The decision is available here.
Complainant makes a false step
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, finding no indicia of typosquatting, despite the fact that the Domain name was merely the singular version of the Complainant’s domain name and trade mark.
The Complainants were Gunther Marktl, an individual, and StepsApp GmbH, a company of which Mr. Marktl was the CEO, both based in Austria. The Complainant company owned a pedometer application named “StepsApp” and used the domain name steps.app in connection with a website that promoted the STEPSAPP pedometer app. Mr. Marktl owned various trade marks for STEPSAPP including International trade mark No. 1329875 and European Union trade mark No. 015179989, both registered in 2016. The Respondent was an individual.
The Domain Name was step.app, registered by the Respondent on 6 May 2018. It resolved to a website that promoted a “Step” development protocol for fitness finance. The website stated that the first app on the protocol was “Step App”, which turned fitness goals into income, “powered by technology in metaverse, augmented reality, and blockchain”.
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.
As far as the first limb was concerned, the Panel found that the Complainant had established rights in the STEPSAPP trade mark, which was a figurative mark. The Panel was of the opinion that the figurative elements of the mark did not overtake the textual element in prominence and therefore should be disregarded in the comparison between the Domain Name and the trade mark. However, the Panel found that the figurative elements were relevant to the evaluation of bad faith under the third element. The Panel noted that the Domain Name incorporated most of the textual element of the STEPSAPP mark, omitting only the plural “s” and adding the dot. The Panel found that these minor differences would not prevent a finding of confusing similarity because most of the textual element of the mark was recognisable within the Domain Name in its entirety. Therefore, the Panel found that the Domain Name was confusingly similar to the Complainant’s registered trade mark.
The Panel considered that it was unnecessary to evaluate the second limb, given its findings under the third limb.
With regard to the third limb, the Complainant submitted that the Respondent was aware of the Complainant’s app and domain names and had intentionally misspelt the Complainant’s trade mark in the Domain Name. The Complainant asserted that its domain name and pedometer app were already widely used and known in the fitness interested consumer market when the Domain Name was registered in 2018. Moreover, the Complainant argued that the similarity between the Domain Name (including the gTLD extension) and the textual element of its trade mark was evidence that the Respondent had targeted the trade mark. The Complainant further claimed that there were similarities between the Parties’ respective websites, and referred in particular to the capitalization and position of the logo in the top left-hand corner of each page on the Respondent’s site.
In response, the Respondent stated that he had obtained the most directly descriptive domain name for a step app when seeking to plan and launch a “play to earn” crypto app based upon counting steps. He argued that the Domain Name corresponded to the descriptive words “step” and “app” and that the Complainant could not claim to have acquired distinctiveness in a descriptive term as a mark. He further countered that the names of multiple pedometer apps incorporated the word “steps” or “step” and that the Complainant’s trade mark could not confer a monopoly in the words “steps” and “app” in the apparently crowded market of apps involving steps.
The third element of the Policy requires a complainant to establish that the disputed domain name has been registered and is being used in bad faith. Here the Panel underlined that the Complainant must demonstrate, with evidence, that the Respondent targeted the Complainant or its trade mark when he registered the Domain Name.
The Panel accepted the Respondent’s contention that the Complainant’s trade mark had obvious descriptive characteristics. The Panel found that the evidence produced by the Complainant did not indicate that its mark was well known or particularly associated with the Complainant. The Panel considered that the combination of the descriptive words “step” and “app” in the Domain Name were insufficient by themselves to demonstrate that the Respondent targeted the Complainant or its mark, even though the Domain Name spanned the dot in the same way as the Complainant’s steps.app domain name, contained the singular of the word “steps” in the Complainant’s trade mark, and was registered after such trade mark.
Further, the Panel did not agree with the Complainant’s assertion concerning the similarities between the Parties’ respective websites. In the Panel’s view, the capitalisation and position of the Respondent’s logo were commonplace and could not support either Party’s case. The Respondent’s logo also included a running shoe which was not present in the Complainant’s trade mark and it also omitted the plural “s”. Moreover, the Panel noted that the Respondent’s app was a fitness finance app, unlike the Complainant’s app, and the Respondent’s website made no reference to the Complainant or its app. The Panel therefore concluded that the Respondent’s registration of the Domain Name was not in bad faith, and it was unnecessary to evaluate use in bad faith. The Complaint was thus dismissed.
Comment
This decision is a reminder that it is often more difficult to prove bad faith when the disputed domain name is similar to a descriptive trade mark. In such cases it is important to prove that the disputed domain name was registered and is being used to target the trade mark owner and profit from their goodwill and reputation. In the absence of any tangible evidence of targeting, a UDRP complaint is unlikely to be successful.
The decision is available here.
UDRP panels should not “plug the information gap”
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, in part due to the lack of clear evidence to support the Complainant’s standing to file the Complaint based on its purported subsidiary’s trade mark rights.
The Complainant was Blackbaud, Inc., a cloud software company founded in 1981 and headquartered in the United States. The Complainant asserted that it held a United States trade mark for MICROEDGE, registered on 24 February 2004, through its legal subsidiary.
The Respondent was 李西美 (li ximei), an individual based in China.
The Domain Name microedge.net was registered on 18 March 2022 and did not resolve to any active website.
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, the Complainant provided a 116-page purchase agreement to substantiate its relationship with the trade mark owner. Based on its purported subsidiary’s trade mark rights, the Complainant contended that the Domain Name was identical to its well-known MICROEDGE trade mark.
As noted in the WIPO Overview 3.0, Section 1.4, a trade mark owner’s affiliate is generally considered to have rights in such trade mark under the UDRP for purposes of standing to file a complaint. In the present case, the Complainant’s trade mark rights were however challenged by the Panel, as it was unable to ascertain that the Complainant had acquired its purported subsidiary, MicroEdge, LLC, based on the lengthy agreement submitted by the Complainant. The Panel also noticed that the United States trade mark cited in the Complaint was in fact owned by “MicroEdge, Inc.”, which seemed to be a different entity and was not mentioned as a target company in the preamble/recital of the said agreement.
The Panel did refer to some factors identified through its own investigations, from which it could be inferred that the Complainant was affiliated with the trade mark owner. For example, the Panel noted that the Complainant’s Wikipedia entry indicated “Blackbaud acquired MicroEdge in 2014” and that the domain name microedge.com redirected to the Complainant’s official website at ‘www.blackbaud.com’.
Despite the above, the Panel found that the Complainant had failed to submit clear and convincing evidence in relation to its trade mark rights for MICROEDGE. The Panel was not obliged to review complicated agreements or conduct independent investigations to plug the information gap. Given the Respondent’s failure to provide basic information to meet the minimum UDRP evidentiary threshold, the Panel held that the Complainant had not satisfied the requirements under the first limb, which would be sufficient to dispose of the Complaint. However, for the sake of completeness, the Panel continued to examine the second and third limbs.
Regarding the second limb, the Complainant contended that the Respondent had not provided any proof of preparations for bona fide use of the Domain Name. However, the Respondent claimed in the Response that she was interested in the topic of “edge computing” and intended to create a website to disseminate related information. In preparation for the launch of the website, she had registered various email addresses and domain names incorporating the term “edge”. In addition to the Domain Name, she had also acquired several other similarly-constructed domain names, such as edgemicro.cn and weiedge.com (the term “wei” is the transliteration of the Chinese equivalent of “micro”).
Interestingly, the Panel also highlighted that the Respondent had failed to provide necessary evidence such as WhoIs records to prove her registration of the domain names mentioned in the Response. Due to the lack of key evidence, the Panel was satisfied that the Complainant had made out a prima facie case showing the Respondent’s lack of rights and interests in the Domain Name. The second limb was therefore satisfied.
As far as the third limb was concerned, the Complainant claimed that, given the nature of the Domain Name, which was identical to the MICROEDGE trade mark, it was very likely that the Respondent would put it to some eventual abusive use. Hence, the passive holding should not prevent a finding of bad faith. The Respondent focused on her lack of prior knowledge of the Complainant and its MICROEDGE trade mark when registering the Domain Name, asserting that this trade mark was not well-known in China where she was based.
In addition to the Complainant’s lack of clear evidence regarding its trade mark rights for MICROEDGE, the Panel also noted that this trade mark had not been substantially used in commerce by the Complainant (for example, it was not used on the main page of the Complainant’s official website) and therefore accepted the Respondent’s contention that the Domain Name was not registered to target the Complainant’s trade mark. The third limb was therefore not satisfied.
Comment
This decision provides a useful reminder to a parent / holding company intending to file a UDRP based on a subsidiary’s trade mark rights. Although many Panels are prepared to infer the existence of authorisation to file a complaint from the parent-subsidiary relationship, it is primordial that complainants provide clear and easily understandable evidence to substantiate their relationship with the trade mark owner, as well as relevant evidence of authorisation. Adding the subsidiary as a co-complaint is also a possibility (transfer of the Domain Name to the parent company may be requested if necessary).
The decision is available here.
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