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Domain name industry news
Clean bill of health for .EU
On 11 January 2022 the European Commission (EC) published its report “On the implementation, functioning and effectiveness of the .EU Top-Level Domain name from April 2019 to April 2021”. This report, which must be submitted every two years under the relevant EC regulations, reviews the yearly audited accounts, financial reports, budget proposals, and the strategy and operational plans of the .EU Registry.
The .EU domain covers the country code Top Level Domain (ccTLD) of the EU as well as its variants in Cyrillic and Greek scripts, as administered and managed by the non-profit organisation EURid. There were 3.7 million registered .EU domain names in April 2021, making the .EU domain the twelfth largest TLD and the eighth largest ccTLD in the world.
The report notes that .EU growth was flat across the entire period under scrutiny as negative growth of -2% in 2019, which resulted from a “continued saturation and consolidation of the domain name market”, as well as the impact of Brexit, was offset by positive growth of 2.2% subsequent to the rise in demand for domain names during the Covid 19 pandemic, when many people and business shifted their activities online.
Bucking the trend for stagnation were Germany, which had the largest share of .EU registrations at the end of the first quarter of 2021, along with Portugal, Ireland and Latvia, which had the highest growth over the period examined (124.2%, 78.7% and 33.3%, respectively).
The period covered by the report of course also witnessed the removal of the right of United Kingdom (UK) residents and organisations established in the UK to hold a .EU domain name pursuant to Brexit, with the report stating that “the impact of UK’s withdrawal from the EU has been substantial on the .eu domain”. From an initial figure of 240,000 .EU domain names registered to UK registrants in 2018, following several warnings from the Registry this dropped to 190,000 in 2019 and the remaining 81,000 domain names were suspended by the Registry on 1 January 2021.
The report also highlights the fact that, in the period covered, the .EU Registry allowed EU citizens to register a .EU domain name irrespective of their place of residence and that it “expanded European linguistic diversity and multilingualism across the .eu domain” by launching the .ευ extension, the Greek script equivalent of .EU. The report boasts that the Registry offers “one of the largest IDN spaces in the world” with over 42,000 IDNs registered at the end of the first quarter of 2021, including 1,300 registered under .ею (the equivalent of .EU in Cyrillic script) and 2,700 under .ευ.
Measures such as the Abuse Prevention Early Warning System (APEWS) (an automated system for predicting abusive behaviour that delays the delegation of suspicious registrations and triggers a verification procedure including a manual review leading to the delegation or the suspension of the domain name), the registrar lock service implemented in 2020 and the nearly 9,000 checks on COVID-19-related domain name registrations that resulted in the suspension of more than 6,500 domain names during the pandemic, were highlighted by the report as contributing to the security and trustworthiness of the .EU TLD.
Cooperation between the Registry and the Belgian Federal Ministry of Economic Affairs, the Belgian Customs (Cybersquad), the Belgian Public Prosecutor’s Office and Europol as well as a joint Action Plan between the Registry and the European Union Intellectual Property Office (EUIPO) launched in 2021 to combat abusive and speculative domain name registrations are all cited in the report as shoring up the fight against illegal and abusive activities involving .EU domain names.
The report concludes that “the .eu domain continues to function in an effective and financially healthy manner, facilitating access to the Digital Single Market, allowing Europeans to display their European identity online, supporting the online presence of SMEs, and promoting multilingualism” and states that the .EU domain provides “an example to follow for other DNS operators”. But the report also warns against complacency stating that the Registry should “continue on its path to ensure a trusted .eu domain and to ensure that illegal behaviours and abuses that are evident elsewhere in the DNS ecosystem do not gain a foothold in the .eu domain space.”
From down under to directly under .AU
Last year, auDA, the Registry responsible for the administration of Australia’s .AU Top Level Domain, announced that, as of 24 March 2022, domain names would be available for registration directly under .AU. Previously it was only possible to register under the second level .COM.AU, .NET.AU, .ORG.AU, ASN.AU, ID.AU, GOV.AU and EDU.AU extensions.
The launch of domain names directly under .AU would seem to be a natural step and will bring Australia in line with other jurisdictions worldwide that already offer domain names directly at the top level. These include the United Kingdom (.UK), New Zealand (.NZ), Canada (.CA), France (.FR), China (.CN) and Germany (.DE). Australia’s close neighbours, New Zealand, have seen registrations directly under .NZ take off since they were introduced in 2014 and, in 2021, around 20 percent of registrants in New Zealand chose to register directly under .NZ.
Current holders of third level domain names under .AU will have a six-month priority Grandfathering Period running from 24 March to 24 September 2022, during which they can apply for Priority Status to register the corresponding domain names directly under .AU. Thus for example, the registrant of domain.com.au will be able to apply for Priority Status to register domain.au.
There will be two Priority Categories, as below:
- Priority Category 1: Third level domain names having a licence creation date on or before 4 February 2018.
- Priority Category 2: Third level domain names having a licence creation date after 4 February 2018.
If there are multiple applicants for the same domain name, the following rules will apply:
- Where there is one applicant under Category 1 and one under Category 2, then the domain name will be allocated to the applicant under Category 1.
- Where there are multiple applicants all under Category 1, the Registry will put the parties in contact for a period of negotiation. In the event that no solution is found between the parties then the domain name will remain unallocated.
- Where there are multiple applicants all under Category 2, the domain name will be attributed to the applicant who registered their third level domain name first.
For any registered third level domain names where the holders have not applied for Priority Status during the Grandfathering Period, the corresponding .AU domain names will become available on a first come, first served basis after 24 September 2022.
It should be noted, however, that in order to register a domain name directly under .AU, the same eligibility requirements as those for third level domain names will apply. To be eligible, a validated Australian presence is required. This includes citizens or permanent residents, organisations, associations and businesses registered in Australia, and legal entities that have a registered Australian trade mark.
NL performed well in 2021
Stichting Internet Domeinregistratie Nederland (SIDN), the Registry operator of the country code Top Level Domain (ccTLD) .NL for the Netherlands, has reported a strong performance for .NL in 2021.
According to a recent news report by SIDN, at the end of 2021 there were some 6,231,000 domain names registered under .NL. This figure represented an increase of 119,000, which, whilst better than the SIDN forecast, was lower than the highest recorded growth of over 206,000 domain names recorded in 2020. SIDN had been concerned that many of the businesses that had registered .NL domain names during the Netherland’s first pandemic lockdown in the spring of 2020 would decide not to renew them in 2021. However, SIDN is now of the view that the ongoing pandemic has encouraged these new registrants to maintain their .NL domain names as they believe that “online or hybrid trading” is set to continue.
Around 900,000 new .NL domain names were registered during 2021, with the number of registrations particularly high during spring and autumn. While SIDN again noted that these figures were lower than in 2020, they were “up on the pre-pandemic level”. SIDN also stressed that there had not been any cancellation peak, even though 781,000 domain names were not renewed.
Domain name registrations under .NL appear to have been boosted by the ongoing digitisation of business. According to SIDN, almost all start-ups in the Netherlands were trading at least partially online in 2020, which in turn naturally increased the number of businesses with websites. At the end of 2020, approximately 84% of Dutch business had websites, and SIDN believes that this number is likely to increase this year. SIDN also noted that the growth of .NL registered domain names was not only due to the increased number of start-ups, but also to the fact that “established” businesses were opening new “online channels”, as well as creating new brands to sell online and taking advantage of potential efficiency benefits by moving some of their business online.
But it has not all been plain sailing for the .NL extension due to the increased threat of cybercrime. According to SIDN, more businesses experienced cyber-attacks, with the main threat coming from ransomware. According to the Anti-Phishing Working Group, the size of this problem is increasing each year. Nevertheless, organisations are taking increased measures to protect themselves against such attacks and SIDN reported that by the end of 2021, more than “three hundred of the Netherlands’ biggest brands and trade names were protected by the SIDN BrandGuard”, which is a monitoring service that flags up typosquats and brand name abuse and automatically profiles “all flagged registrations as phishing, advertising or normal websites”. In addition, SIDN saw encouraging progress being made against “fake web-shops”. The report shows that in conjunction with its partners, SIDN took down nearly 4,500 “fake web shops”.
In summary, SIDN remains confident about the position of .NL in 2022. Primarily because of the large and diverse numbers of businesses active online, SIDN believes it has “an increasingly robust foundation for economic and social progress.”
To visit the SIDN website, please click here.
To visit the Anti-Phishing Working Group, please click here.
Domain name recuperation news
UDRP complaint loses its mojo
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 names cloud-mojo.com, cloudmojo.tech, cloudmojotech.com, and cloudmojotech.website, finding that the Complainant had failed to demonstrate that the Respondent had no rights or legitimate interests in respect of the disputed domain names.
The Complainant was Easy Online Solutions, Ltd d/b/a MojoHost, a United States company providing web-hosting, content distribution, and other “software as a service” (“SaaS”) services. The Complainant had registered a number of trade marks, including United States Trademark Registration No. 5,895,310, MOJOCLOUD, registered on 29 October 2019. In addition, the Complainant owned the domain name mojocloud.com, which redirected to the Complainant’s main website at “www.mojohost.com”.
The Respondents were Ahmed Parvez Banatwala, Cloudmojo Tech LLP, and Ahmed Parvez Banatwala, Construma Consultancy Pvt. Ltd, both of India (collectively the “Respondent”). The disputed domain names had been registered between 8 May 2020 and 12 February 2021 for use by Cloudmojo Tech LLP, the Respondent’s limited liability partnership registered in Mumbai, India in or around June 2020. The Respondent carried out a business of sales and distribution of Microsoft products, making active use of the disputed domain names cloudmojo.tech and cloudmojotech.com for this purpose. The other two disputed domain names were not actively used by the Respondent.
At the time of submission to the Complaint to the Center, the Respondent had a pending trade mark application in India for CLOUDMOJO TECH in respect of computer programming, technology consulting and SaaS services in International Class 42. The application was filed on 22 June 2021, approximately three months prior to the filing of the Complaint on 27 September 2021. It was advertised accepted on 12 November 2021, and was entered on the Register, Registered Trademark No. 5,014,870, on 9 December 2021.
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 disputed domain name is identical or confusingly similar to a trade mark 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.
Identity or confusing similarity
Under paragraph 4(a)(i) of the UDRP, the Panel observed that the disputed domain names contained the Complainant’s MOJOCLOUD trade mark, with the two word elements reversed, and with minor additions, notably hyphens and the term “tech” in the respective disputed domain names. The Panel found that such alterations and additions did not prevent a finding of confusing similarity between the Complainant’s MOJOCLOUD trade mark and the disputed domain names, and that the Complainant had met the requirements of the first element of the UDRP.
Rights or legitimate interests
Under paragraph 4(a)(ii) of the UDRP the Panel noted that the Respondent had been carrying on a business involving the sale and distribution of Microsoft products, albeit on a modest scale. The Panel also took note of the Respondent’s claim not to have knowledge of the Complainant when registering the disputed domain names, and held that such a denial of knowledge was in fact plausible, given that the Complainant had failed to produce evidence in the nature of sales revenues, advertising expenditure, or website traffic, such that knowledge of the Complainant and its relevant trade mark rights could be presumed on the part of the Respondent. The Panel further observed that the disputed domain names were resemblant of the Respondent’s limited liability partnership name, and that the Respondent had registered CLOUDMOJO TECH as a trade mark in India. The Complainant had not sought to invalidate the Respondent’s trade mark, despite being aware of the Respondent’s trade mark application at the time that the Complaint was filed, and the Respondent’s trade mark had subsequently matured to registration without being subject to any limitations under Indian law. The Panel commented that in circumstances where the Respondent had a subsisting registered trade mark in India for the CLOUDMOJO TECH trade mark, and appears to be using that trade mark in connection with the services for which it is registered, the Complainant had not established that the Respondent had no rights or legitimate interests in respect of the disputed domain names. Accordingly, the Complaint failed under the second element of the UDRP.
Bad faith
In light of the Complainant’s failure to carry its burden under the second element of the UDRP, the Panel found it unnecessary to consider the third element.
Comment
The present case sits at the intersection between the UDRP and national trade mark law. While domain names are unique and registered on a first-come, first-served basis, the UDRP recognises that coexistence between similar or even identical trade marks is possible. In circumstances where a respondent has taken steps to register a business name, and/or obtain trade mark rights that correspond to a domain name that is being used for what appear to be bona fide purposes, any resulting conflict will often not be limited to the domain name alone, and will likely be better resolved through proceedings in national courts of competent jurisdiction.
The decision is available here.
Raincheck on the recuperation of cloudfm.com
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 cloudfm.com, finding that the Complainant had failed to prove that the Respondent had registered and used the Domain Name in bad faith.
The Complainant was Cloudfm Group Limited, a UK limited company providing facilities management services. The Complainant owned several trade marks incorporating the term CLOUDFM registered between 2014 and 2019.
The Domain Name was registered on 8 February 2009, but was acquired by the Respondent in 2020 during an aftermarket auction. The Respondent also owned the domain names playfm.com and rockfm.com, amongst others. In 2021, discussions were initiated between the Respondent and the Complainant regarding a potential sale of the Domain Name. Negotiations ensued, during which the Respondent explained its purported plan for the Domain Name, but they failed due to a lack of agreement on price. At the time of the proceedings, the Domain Name resolved to a parking page.
The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name. The Respondent submitted a Response requesting the Panel to enter a finding of Reverse Domain Name Hijacking (RDNH).
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 trade mark 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.
Identity or confusing similarity
Under the first element of paragraph 4(a) of the UDRP, the Panel found that the Complainant had established rights in the CLOUDFM trade mark, and that the Domain Name incorporated the Complainant’s registered mark in its entirety.
Rights or legitimate interests
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 because (i) the Respondent’s only purpose was to sell the Domain Name to the Complainant at an unreasonable price, (ii) the Respondent provided no evidence supporting its claim that it would develop radio services in relation with the Domain Name, and (iii) the Respondent was not commonly known by the name “Cloudfm”, which was in any case an unusual combination of words. The Panel declined to comment on this issue, considering that it was unnecessary given its findings in relation to registration and use in bad faith.
Bad faith
Under the third element of paragraph 4(a) of the UDRP, the Complainant claimed that the Respondent had registered and used the Domain Name in bad faith for two main reasons. First, the Complainant argued that the Respondent must have been aware of the Complainant’s existence because it bought the Domain Name from one of the Complainant’s competitors. In view of this, the Complainant argued that, at the very least, the Respondent should have conducted searches to ensure that it was not infringing a third-party trade mark. The Complainant also argued that the Respondent’s knowledge of the Complainant was further evidenced by the unusual combination of the words “cloud” and “fm” in the Domain Name. The second main point of the Complainant’s case was that the Respondent must have registered and used the Domain Name in bad faith because it was linked to a company that had previously been a respondent in several other domain name disputes, thus establishing a pattern. The Respondent countered by explaining that it had no knowledge of the Complainant’s existence and in any case it had a number of domain names including the term “fm” for which it had plans to develop a radio service unrelated to the Complainant’s industry.
The Panel rejected most of the Complainant’s arguments. Regarding the Respondent’s duty to investigate the previous registrant of the Domain Name, connect it to the Complainant and then note that it was allegedly one of the Complainant’s competitors, the Panel found that there was none in the present circumstances. The Panel also found that nothing suggested that the Respondent was effectively aware of the Complainant’s existence, as nothing on the website at the Domain Name indicated otherwise, and it was in fact the Complainant who first reached out to the Respondent to enquire about purchasing the Domain Name. Further, the existence of an existing domain name portfolio including the letters “fm” – registered in all probability some time before the Domain Name – strengthened the Respondent’s argument that the Domain Name was registered in good faith. However, the Panel pointed out that the Respondent should have acknowledged that it was a domain name investor, but this was not in and of itself evidence of bad faith. Finally, the Panel found that the Respondent’s relationship to a company involved in previous decisions finding bad faith did not evidence a pattern for the purpose of this case. As such, the Complainant had not satisfied the third element of paragraph 4(a) of the UDRP and the Complaint was denied.
The Panel concluded by declining to enter a finding of RDNH, underlining that both the Complainant and the Respondent had not been entirely candid as they had both failed to disclose relevant information to the Panel.
Comment
The decision is very detailed and underlines that experienced Panels will take the time to thoroughly examine and reflect on both parties’ contentions, rather than simply taking assertions at face value. Parties to UDRP complaints understandably have a tendency to present facts in way that strengthens their case, but Panels will read their submissions in detail and piece together the true narrative before making their findings. Full disclosure is therefore crucial. The decision also highlights once again the risk of filing a so called “Plan B” case, whereby a party files a complaint after an unsuccessful purchase attempt when faced with too high a price.
The decision is available here.
Registrant of .FI and .IO domain name denied transfer of identical .COM
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel refused to order the transfer of the domain name at issue because the Complainant failed to demonstrate that the Respondent had registered and used the domain name in bad faith.
The Complainant was Appfollow.fi Oy, a Finnish company providing a software application review management, analytics and app store optimisation platform.
The Respondent was Pavel Gross, an individual based in the Russian Federation.
The disputed domain name, appfollow.com, was registered in February 2017 and used to point to various websites. Until 2020 it pointed to a registrar parking page or to a page indicating that the disputed domain name was for sale. Starting from January 2020, the disputed domain name resolved to a website promoting the “App Annie” service (one of the Complainant’s supposed competitors) as well as to a website containing articles about various applications and topics.
To be successful in a complaint under the UDRP, 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 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.
Identity or confusing similarity
With regard to the first limb, the Complainant submitted that it owned a Finnish trade mark registration for the mark APPFOLLOW dating from May 2021. The Complainant also claimed rights in this term as an unregistered trade mark.
The Respondent did not dispute this and the Panel found that the disputed domain name was identical to the Complainant’s trade mark. In addition, the Panel noted that the registration date of the Complainant’s trade mark was not relevant to assess the existence of rights under the first limb of the UDRP. The Panel also found that the Complainant had submitted sufficient evidence, consisting of sales revenues and examples of use of the term “Appfollow”, to prove the existence of its unregistered rights. The Panel therefore considered that the Complainant had satisfied the first requirement under the UDRP.
Rights or legitimate interests
In light of its findings under the third limb of the Policy, the Panel did not comment on the eventual existence of the Respondent’s rights or legitimate interests.
Bad faith
Turning to the third requirement of the UDRP, the Complainant asserted that the disputed domain name had been registered in 2017 in bad faith. The Complainant argued that its business, conducted at first via the matching domain name appfollow.ru, had already started in 2014. A year later, the Complainant registered and started to use the domain name appfollow.io and created a Twitter account. The Complainant also submitted its results associated with Google AdWords between 2016 and 2021 and with its advertising through QuoraAds. In addition, the Complainant stated that its website at appfollow.io had over 22 million visitors in the period 2017 to 2021. As a consequence, the Complainant stated that it was clearly using the term “Appfollow” before the Respondent registered the disputed domain name and as such, it was likely that the Respondent was aware of the Complainant’s use of the term “Appfollow” before registering the disputed domain name in 2017. Furthermore, according to the Complainant, the content of the Respondent’s website was clearly targeting the Complainant given the redirection to one of the Complainant’s competitors in 2020.
The Respondent rebutted these arguments by asserting that he had no knowledge of the Complainant when registering the disputed domain name. He contended that his aim when he registered the disputed domain name was to offer a not-for-profit service to provide information about various applications. The Respondent also indicated that upon closer analysis of the Complainant’s statistics, the Complainant’s sales revenues as well as use of the term “Appfollow” before 2017 were limited to the Russian Federation and were not substantial. Moreover, the Respondent argued that the articles and website postings referring to the Complainant as “Appfollow” dating from 2016 appeared to be from fairly specialised publications.
The Panel admitted the possibility that the Respondent could have been aware of the Complainant’s unregistered trade mark when registering the disputed domain name in 2017. Nevertheless, the Panel highlighted the fact that the term “Appfollow” was largely descriptive in many contexts. The Panel also found that the scale of the Complainant’s use of this term at the time that the disputed domain name was registered was not sufficient to reject the Respondent’s denial of awareness of the Complainant’s unregistered trade mark. Accordingly, the Panel decided that the Respondent had not registered and used the disputed domain name in bad faith and so the Complainant had not satisfied the third requirement under the UDRP. Therefore, the Panel denied the transfer of the disputed domain name to the Complainant.
Finally, the Panel also considered whether a finding of reverse domain name hijacking (“RDNH”) was appropriate. RDNH is defined in paragraph 1 of the UDRP Rules as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” In this case, the Panel did not decide to make a finding of RDNH as the Complaint was not necessarily bound to fail. Indeed, the Panel underlined that it was possible that the Respondent was aware of the Complainant’s unregistered trade mark when registering the disputed domain name. In addition, the Panel noted that the disputed domain name used to redirect to one of the Complainant’s competitors.
Comment
This decision highlights once again how having a trade mark by itself does not necessarily mean that a trade mark holder will succeed in obtaining the transfer of a domain name, even if it is identical to such trade mark. This is particularly the case when a disputed domain name has descriptive connotations. Similarly, having matching domain names under different extensions will not automatically allow a complainant to claim rights to similar domain names.
The decision is available here.
