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:
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
Re-launch of .BH
Telecommunications Regulatory Authority (TRA), the Registry running the country code Top Level Domain (ccTLD) for the Kingdom of Bahrain, has re-launched the .BH extension and launched a new one, .البحرين.
The Kingdom of Bahrain – an island country in Western Asia, located in the Persian Gulf – has recently decided to simplify and automate the registration process of its main extension, .BH. Indeed it was previously necessary for applicants of .BH domain names to have a local presence in Bahrain and the process could be long. TRA stated in a press release that “the new process of registration is fast, simple, and secure, cutting the time of registration from days to minutes. Being able to register your .bh domain in such a quick manner is a boost to Bahrain’s digital presence in key sectors such as tourism, culture, and the economy.”
After a Sunrise period reserved for trade mark owners that ran from 3 November 2021 to 2 January 2022, a Local Phase is currently taking place until 3 May 2022, which means that .BH domain names are currently available on a first come, first served basis to all entities (companies or individuals) that are based in Bahrain.
In parallel, TRA has launched the Internationalised country code Top Level Domain (IDN ccTLD) .البحرين (translating as “.albahrain”), which is the Arabic equivalent of .BH. A Grandfathering Phase is currently taking place until 3 May 2022 allowing holders of existing domain names under .BH, .COM.BH, .NET.BH and other extensions to claim the corresponding domain names under .البحرين. It should be noted that only Arabic characters are permitted under this extension, thus a transliteration in Arabic is necessary for strings in Latin characters.
From 3 May 2022 onwards, both .BH and .البحرين domain names will be available to anyone on a first come, first served basis, without restrictions. The current number of registrations under .BH is not known but the lifting of the restrictions should undoubtedly boost the extension.
As for the other extensions managed by TRA, restrictions still apply and vary according to the extension. For example, applicants of .COM.BH domain names still need to provide proof that the requested domain names are either related to their company name or to a trade mark they hold.
Stay of execution for .XXX Sunrise B blocks
Back in July 2021, Anchovy News reported that .XXX Sunrise B blocks taken out by brand owners when the .XXX Top Level Domain (TLD) originally launched in 2011 would expire on 1 December 2021. As a result, they would need to be replaced with a new type of block introduced in 2021 by Minds + Machines (MMX), the Registry owner, in order to extend the protection of the brand in both the .XXX extension as well as a number of other associated, adult-themed TLDs. Since that time, the deadline has twice been extended and the Registry has changed hands.
Minds + Machines (MMX), which headed up the Registry in the run-up to the December 2021 expiry of the .XXX Sunrise B blocks, introduced two new blocking products called AdultBlock and Adultblock+ in 2021, which offer varying degrees of protection for brands in the .XXX extension. These blocks were designed to replace the previous .XXX Sunrise B blocks, but also to cover MMX’s other adult-focussed TLDs, .SEX, .ADULT, and .PORN.
Then, last year, MMX sold its entire portfolio of TLDs (including, but not limited to, its adult-themed TLDs) to the GoDaddy group and the deadline for converting .XXX Sunrise B blocks was extended to 15 January 2022. After this date, any .XXX blocks that had not been converted were slated for deletion; however, the Registry has recently extended the deadline once again and it is now expected to fall in the second trimester of 2022.
The somewhat unique nature of the .XXX Sunrise B blocks (registered over ten years ago and not offering a publicly accessible WHOIS record) means that many brand owners have either lost track of, or forgotten the significance of their Sunrise B blocks. This latest extension of the deadline will allow brand owners who have not already done so to retain the protection of their brands both in the .XXX TLD and the other associated TLDs, albeit at a price that is considerably higher than the initial $160 fee for a 10-year Sunrise B block.
Additionally, any brand owner that did not previously protect its brands via a .XXX Sunrise B block may wish to consider doing so via the Registry’s new, expanded blocking mechanism, as this is not limited to Sunrise B block holders.
SWITCH to DNSSEC
SWITCH, the Registry responsible for running Switzerland’s .CH country code Top Level Domain (ccTLD), has announced the implementation of a program designed to ensure increased protection against fake websites and cybercrime.
SWITCH’s five-year protection program aims at promoting the introduction of “established security standards” amongst providers of .CH domain names. It will also be offering financial incentives in order to encourage providers to implement these security standards. With the new program, SWITCH is aiming to protect 60% of .CH domain names with Domain Name System Security Extension (DNSSEC) by the end of 2026.
DNSSEC was designed and implemented as a response to the inherent security vulnerabilities in the way that the Domain Name System (DNS) operates, which make it possible to divert internet users away from their intended website destinations and to redirect them to third-party websites without their knowledge. This can result in the dissemination of computer viruses, malware and even the theft of sensitive financial and personal data.
These online attacks can also take the form of ‘DNS spoofing’, where a hacker gains access to the domain name servers on which a domain name is hosted in order to redirect visitors to a website of the hacker’s choosing, or ‘DNS hijacking’, where a hacker can modify DNS data to gain control of the complete DNS information of the domain name. Online attacks can also be used to try and obtain users’ personal information, such as bank details.
This type of fraudulent activity is not only a serious threat to users but can also have a detrimental effect on the domain name holder and their online business. Such fraudulent activity can result in a loss of revenue as well as a loss in consumer confidence in relation to the online business in question. DNSSEC seeks to mitigate this situation by introducing additional security at the level of the domain name servers, which ensures that Internet users are alerted to any possible re-direction to a third-party website that is not their intended destination. Thus, DNSSEC aims to build a ‘chain of trust’ between users and the websites they visit.
Michael Hausding, an expert in domain fraud at SWITCH, noted the following:
“Whenever I visit a website, I want to be confident that the site I am visiting is a genuine one. DNSSEC ensures that attackers are unable to redirect my request on the internet to a fake website. Threats such as password and credit card phishing, computer viruses and other forms of internet crime are often lurking on these fake websites.”
According to SWITCH, only 6% of .CH domain names were protected with DNSSEC at the beginning of 2021. This is extremely low in comparison with other European countries like the Czech Republic (.CZ) or Norway (.NO), where some 60% of domain names are registered with DNSSEC. However, SWITCH has been preparing for the launch of this program since the spring of 2021 and has been working with registrars in order to increase the use of DNSSEC. As a result, the number of .CH domain names registered with DNSSEC increased from 6% to 35% by the end of 2021.
It will be interesting to see how the usage of DNSSEC develops, but SWITCH is obviously hoping that its five-year plan will reap positive results and make a positive contribution with regard to combatting fake websites and cybercrime.
To visit SWITCH, please click here.
Domain name recuperation news
Criticism website sets off domain name fireworks
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 phantomfireworksscams.com because the Complainant failed to prove the absence of rights and legitimate interests on the part of the Respondent.
The Complainant was Phantom Fireworks Showrooms, LLC and Phantom I.P., LLC, two United States limited liability companies. The Complainant Phantom Fireworks Showrooms, LLC mainly operated in the sale of fireworks nationwide under the trade mark PHANTOM FIREWORKS in the United States. It owned a domain name phantomfireworks.com, redirecting to its website “www.fireworks.com” which traced a history over 40 years. The Complainant Phantom I.P., LLC owned two United States trade marks incorporating the term PHANTOM FIREWORKS both registered in 2007 and licensed the trade marks to the Complainant Phantom Fireworks Showrooms, LLC for use in its business.
The Respondent was Frank Elliott, an individual based in the United States and his company Seasonal Sales Inc., a United States corporation which operated a website advertising fireworks sales at “www.jurassicfireworks.com”.
The Domain Name was phantomfireworksscams.com, registered by Frank Elliott on 8 October, 2020. It was being used to point to a criticism site headed “PHANTOM FIREWORKS SCAMS”, followed by the tagline “Free Should Mean Free”. The website included recordings of conversations between Mr. Elliott and sales personnel at the Complainant’s retail outlets, detailed instances of alleged deceptive advertising in the Complainant’s promotions and encouraged site visitors to sign a petition and contact a consumer protection agency.
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 in a complaint under the UDRP, a Complainant must satisfy the requirements of paragraph 4(a) of the UDRP, namely that:
(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 disputed domain name has been registered and is being used in bad faith.
As far as the first limb was concerned, the Complainant contended that the Domain Name was confusingly similar to its registered PHANTOM FIREWORKS trade mark. Given that the first limb under the UDRP functions primarily as a standing requirement, the Panel accepted the Complainant’s contention and found that the Complainant had established rights in the PHANTOM FIREWORKS trade mark and that the Domain Name incorporated the trade mark in its entirety. It was under the second and third limbs that the Panel took into account the Respondent’s defence with respect to the use of the domain name for criticism purposes.
With regard to the second limb, the Complainant asserted that the Respondent had no permission to use the PHANTOM FIREWORKS trade mark and had no rights or legitimate interests in the Domain Name. According to the Complainant, the Respondent was a competitor that sought to tarnish the Complainant’s reputation, disrupt its business, and divert sales to the Respondent for commercial gain. The Complainant further indicated that the Respondent’s website promoted misstatements about the Complainant’s pricing, including unauthorized recordings of telephone conversations with the Complainant’s employees, and encouraged visitors of the website to file Consumer Protection Agency complaints against the Complainant. Moreover, the Respondent promoted the domain name by shouting and speaking through blowhorns while in close proximity to both the Complainant’s customers and showroom. As such, the Complainant claimed that the Respondent’s use of the domain name served no purpose other than to harass the Complainant.
In response, the Respondent stated that he had “fair use” rights to criticize and comment on the Complainant’s deceptive practices, as indicated by the word “scams” in the Domain Name. He argued that the Domain Name was registered and used in good faith for this purpose and had not been used to divert consumers for commercial gain. He countered that he was allowed to record conversations under Wyoming law, where the conversations took place that he posted on the website.
The Respondent further explained that he offered to take down the website “if Phantom Fireworks would change their marketing to be in line with the industry standard and stop the use of gimmicks, trick marketing, and scandalous advertisement.”
In order to assess the Respondent’s rights or legitimate interests in the Domain Name, the Panel noted that, under paragraph 4(c)(iii) of the UDRP, the issue was whether the Respondent’s use of the Domain Name to refer to the Complainant and criticize its advertising practices constituted a genuine and non-commercial fair use or was merely a pretext for gaining commercial advantage. The Panel found that the Respondent’s website did not disclose the website operator or include a link to the Jurassic Fireworks website. There was no advertising on the Respondent’s website for goods or services offered by the Respondent or any third party. The Complainant made mere conclusory statements to the effect that the Respondent’s allegations were “lies and misstatements” but failed to dispute the authenticity of the advertisements, prices, and voice recordings published on the Respondent’s website. Therefore, the Panel found that the Respondent’s website was clearly critical of the Complainant and not designed to misleadingly emulate the Complainant’s website.
For the sake of completeness, the Panel additionally assessed whether the Respondent’s website tarnished the Complainant’s mark. The Panel found that in the present case, all parties were located in the United States, where the concept of tarnishment would not apply to legitimate critical fair and non-commercial use of a trade mark. Further, the Panel noted that fair-use criticism, even if libelous, would not constitute tarnishment and was not prohibited by the UDRP Policy, the primary concern of which was cybersquatting. The Panel also found that nothing suggested that the Respondent, a competitor, had attempted to pass itself off as the Complainant or misleadingly divert Internet users of the Complainant. The Respondent’s substantive criticisms were detailed on the website associated with the Domain Name, with supporting evidence in various forms. Although those claims may be disputed in an appropriate forum, the Panel pointed out that the UDRP proceeding would not lend itself to an adjudication of underlying libel, fraud, or consumer protection controversies. Finally, the Panel noted that the core issue was whether the Respondent was engaged in cybersquatting activity, and the Panel found on this record that it was not.
In view of the above, the Panel concluded that the Respondent had successfully demonstrated that he had rights and legitimate interests in the Domain Name. The second limb was therefore not satisfied by the Complainant.
Regarding the third limb, given the analysis under the second limb above, the Panel concluded that, although the Respondent arguably played both sides of the competition and criticism coin, the finding of legitimate interests logically impelled a conclusion that the Respondent was not acting in bad faith. In the Panel’s view, such conclusion was supported by the Respondent’s registration and use of the Domain Name exclusively for a genuine non-commercial criticism site which did not contain links to the Respondent’s competing site. The Panel therefore found that the Respondent’s registration was not in bad faith and dismissed the Complaint.
The Panel concluded by declining to enter a finding of RDNH, underlining that the mere lack of success of a complaint was not itself sufficient for a finding of RDNH.
Comment
This decision is a good example of how the UDRP seeks to balance the interests of trade mark owners and domain name registrants whose names are similar to the trade marks in question. Under the UDRP, the use of a domain name exclusively for a genuine non-commercial criticism purpose may create legitimate interests in such domain name. It is worth pointing out that the Panel was aware that the Parties in this case were competitors and had physical locations near each other and therefore a commercial impact was clearly desired from the Respondent’s perspective. The fact that there were no commercial links to the Respondent’s website at the Domain Name was key to the Panel’s decision.
The decision is available here.
Liquid rubber doesn’t guarantee a watertight case
In a recent decision under the Terms and Conditions of registration of .SE domain names (the “SE. Policy”) before the World Intellectual Property Organization (WIPO), a .SE Arbitrator declined to transfer the domain name liquidrubber.se as the Petitioner failed to demonstrate bad faith registration or use and the absence of rights or justified interest on the part of the Domain Holder.
The Petitioner was Liquid Rubber Sweden AG, a Swedish company registered in 2015 that owned a Swedish national figurative trade mark LIQUID RUBBER registered on 5 November 2021 for goods and services in classes 17 and 37. However this trade mark registration was opposed by the Domain Holder.
The Domain Holder was W.H., LRE Coatings BV, a Dutch company that registered the Domain Name liquidrubber.se in 2010. The Domain Holder filed the Swedish national figurative trade mark LIQUID RUBBER on 12 November 2021 (with priority from the national Benelux trade mark registration dated 7 September 2021) which was registered on 1 December 2021 for goods and services in classes 2 and 45.
The Petitioner initiated proceedings under the .SE Policy for a transfer of ownership of the Domain Name, indicating that it was active in the building and construction business, including import and export of building material, and that it had exclusive right to the company name Liquid Rubber Sweden AB.
The Domain Holder claimed to be the rightful owner of the Domain Name and argued that the Petitioner had acted in bad faith in trying to register the trade mark LIQUID RUBBER, in taking over the company name Liquid Rubber Sweden AB, and in initiating the proceedings under the .SE Policy.
The Domain Holder further explained that, since 2014, it had acted under an exclusive distribution agreement with Liquid Rubber Worldwide Inc. for the European region and that, with the trade name Liquid Rubber Europe, it had been the direct supplier of liquid rubber products in the Netherlands, Belgium, Germany and France, whereas it distributed the products in the United Kingdom, Ireland and Scandinavia via a main distributor in each region, with exclusive rights to sell the products in their respective region.
The Domain Holder added that, in 2014, it had entered into a distribution agreement with a Finnish-based company, Ruiskukumi, and that, in 2015, Ruiskukumi had started collaborating with an individual in Sweden, and the company Liquid Rubber Sweden AB was then registered in order to take on the distribution of the liquid rubber products in Sweden, including the right to use the trade mark LIQUID RUBBER.
The Domain Holder indicated that, in 2019, Ruiskukumi ended its collaboration with the Swedish individual / Liquid Rubber Sweden AB, and concluded an agreement with another distributor and that, although no longer a distributor of liquid rubber products, the individual had sold Liquid Rubber Sweden AB to the Petitioner in late 2020. The Domain Holder further stated that the Petitioner used the trade mark LIQUID RUBBER for marketing its own services under another domain name liquidrubbersweden.se but that it did not offer original LIQUID RUBBER products via such domain name, as the Petitioner was not an authorised distributor of the LIQUID RUBBER products. The Domain Holder added that, since the new owner of the Petitioner took over the company, there had been no business activity.
To be successful under Paragraph 7.2 of the .SE Policy, a Petitioner must satisfy all three requirements, namely that:
1. The Domain Name is identical or similar to a trade symbol (trade mark or service mark), or other name rights, which is legally recognized in Sweden and to which the party requesting dispute resolution can prove its rights, and
2. The Domain Name has been registered or used in bad faith, and
3. The Domain Holder has no rights or justified interest in the Domain Name.
Under the first element of the .SE Policy, the Petitioner claimed that the Domain name liquidrubber.se was identical to its company name Liquid Rubber Sweden AB, and was also identical to its registered trade mark (not considering the figurative / graphic part). The Petitioner consequently considered that the risk of confusion was obvious.
The Domain Holder argued that the Petitioner held no rights in the name Liquid Rubber and that the trade mark registration had been opposed based on prior right and bad faith. The Domain Holder considered that the Petitioner used the trade mark LIQUID RUBBER for marketing its own services under the domain name liquidrubbersweden.se without the Domain Holder’s authorisation.
The Arbitrator held that the conditions under the first element were satisfied because the Domain Name was similar to the Petitioner’s company name Liquid Rubber Sweden AB. The Arbitrator declined to consider the Petitioner’s trade mark registration LIQUID RUBBER due to the fact it had been opposed by the Domain Holder and was therefore not in force.
Under the second element of the .SE Policy relating to bad faith registration or use, the Petitioner argued that (i) the Domain Holder was aware of the Petitioner’s business, company name and trade mark, (ii) the Domain Holder did not conduct business in Sweden and (iii) the Domain Name had only been used to harm the Petitioner’s business and reputation and to promote competitors of the Petitioner.
The Domain Holder argued that the Petitioner held no rights in the name Liquid Rubber and that the trade mark registration had been opposed, and the Petitioner had acquired the company name Liquid Rubber Sweden AB in bad faith, since the new owner and sole board member knew that the trade mark LIQUID RUBBER belonged to the Domain Holder.
The Arbitrator held that the conditions under the second element of the .SE Policy were not met. The Doman Name had not been registered in bad faith as it was registered over four years before the registration of the company name Liquid Rubber Sweden AB.
As far as bad faith use was concerned, the Arbitrator held that, based on the documentation provided by the Domain Holder, the Domain Name was used to sell liquid rubber products and services with the statement: “Liquid Rubber provides a durable quality for waterproofing, air barriers and surface protection”. To the Arbitrator, it seemed clear that the Domain Holder had the right to use and register LIQUID RUBBER in Europe, including Sweden.
The Arbitrator also pointed out that the Petitioner’s company name was originally registered pursuant to a business agreement between the Domain Holder’s Scandinavian distributor and a Swedish individual, as part of activities to market and sell the Domain Holder’s goods and services in Sweden.
The Arbitrator added that, although neither of the Parties’ Swedish national trade marks were in force (one being opposed and the other in the formal opposition period), the Domain Holder’s trade mark had priority over the Petitioner’s.
The Arbitrator concluded that the Domain Holder had the right to the LIQUID RUBBER trade mark, alone or alongside the Petitioner, and therefore the use of liquidrubber.se could not be seen as use in bad faith.
In the Arbitrator’s opinion, the dispute did not look like cybersquatting, but more like a possible trade mark infringement or unfair competition case. To the extent that the Petitioner may have a claim against the Domain Name Holder for trade mark infringement or unfair competition, such a claim belonged in another forum and was beyond the scope of the .SE Policy, which was limited to considering whether the Domain Name had been registered or used in bad faith.
Under the third element of the .SE Policy relating to the Domain Holder’s lack of rights or justified interest in the Domain Name, the Petitioner claimed that the Domain Holder obviously had no justified interest in the Domain Name. In this regard, the Domain Holder argued that it was the European representative for the original provider of the products and trade mark LIQUID RUBBER.
The Arbitrator ruled that, as the Domain Holder had an exclusive distribution agreement with Liquid Rubber Worldwide Inc. for the European region, including Sweden, since 2014, i.e. prior to the initial registration of Liquid Rubber Sweden AB, the Domain Holder had at least a justified interest in the Domain Name.
Comment
This decision acts as a reminder that, while the Uniform Domain Name Dispute Resolution Policy (UDRP) has been adopted by some country code Top Level Domains, many operate their own procedures which, while similar to the UDRP, contain a number of subtle variations. For example, in this case under the first element the Petitioner succeeded in proving a right on the basis of its company name. This would not have been possible under the UDRP where a trade mark right (either registered or at common law) is always necessary.
The decision is available here.
Registration date of a domain name is key to UDRP panels
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 a Domain Name because the Complainant failed to prove that it had been registered and used in bad faith. The Panel’s research demonstrated that it was more likely than not that the Respondent had registered the disputed domain name before the Complainant’s rights came into existence.
The Complainant was Broadband Hosting B.V., a Dutch company established in 2001. It was the owner of European Union and United Kingdom figurative trade marks incorporating the term NLIX THE INTERCONNECT EXCHANGE, registered in 2017 and 2018 respectively.
The Respondent was Peter van Rotterdam of the Netherlands.
The disputed Domain Name was nlix.net. It was not resolving. It was not clear from the Parties’ submissions when the Respondent acquired the Domain Name.
To be successful in a complaint under the UDRP, a complainant must satisfy the following three requirements set out at 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.
As far as the first limb was concerned, the Panel was satisfied that the Complainant had rights in the figurative trade mark incorporating the term NLix and that the Domain Name was identical to the textual and dominant element of this trade mark. Thus the Complainant satisfied the first element set out in paragraph 4(a) of the UDRP.
Moving on to the second requirement, given its finding as to whether the Respondent had registered and used the Domain Name in bad faith, the Panel concluded that there was no need to address the existence of rights or legitimate interests.
With regard to the third requirement, under the UDRP a complainant must demonstrate that a domain name has both been registered and is being used in bad faith.
The Complainant claimed that, as the Respondent lived in the Netherlands, the Respondent was at least familiar with the Dutch market and therefore aware of the Complainant and/or its trade mark rights at the time that the Domain Name was registered on 7 April 2003. In addition, the Complainant asserted that the Domain Name was acquired in order to be sold to the Complainant.
The Respondent argued that he acquired the Domain Name for personal and business use more than 25 years ago, and therefore not for financial gain. Furthermore, the Respondent contended that he could not have been aware of the Complainant or its trade mark rights at the time the Domain Name was registered for the following reasons: (i) he was living in New Zealand when he registered the Domain Name in 1996 and chose the term “nlix” as an acronym for “Next Level Information eXchange”; and (ii) he registered and used “NLIX” as a trade name in 2000, while the Complainant registered and started using its trade name in the Netherlands in 2001, and its domain names nl-ix.net, nl-ix.nl, and nlix.nl in 2002. According to the Respondent, he did not engage in Internet activities similar to those of the Complainant and he had never engaged in Internet activities that could tarnish the Complainant’s trade mark or goodwill, nor had he registered the Domain Name primarily for the purpose of selling it to the Complainant.
In light of this, it was necessary for the Panel to determine the actual date of registration of the Domain Name.
In this regard, as stated in section 4.8 of the WIPO Overview 3.0 of WIPO Panel Views on Selected UDRP Questions, Third Edition (“WIPO Overview 3.0”):
“Noting in particular the general powers of a panel articulated inter alia in paragraphs 10 and 12 of the UDRP Rules, it has been accepted that a panel may undertake limited factual research into matters of public record if it would consider such information useful to assessing the case merits and reaching a decision.”
With respect to the registration date of the Domain Name, the Panel reviewed the WhoIs record of the Domain Name and noted that the creation date was 7 April 2003, which matched the expiry date of the Domain Name as communicated by the Registrar to the Center, i.e. 7 April 2022. However, although the Panel found the Respondent’s evidence unclear, it appreciated that it may be difficult and even impossible for the Respondent to obtain evidence of actual registration of the Domain Name more than 20 years ago, especially as the Domain Name had been registered with several registrars. The WhoIs history confirmed that the Domain Name was already registered in 2002 in connection with name servers in New Zealand, as evidenced by reference to the Internet Archive Wayback Machine dated 2001 submitted by the Respondent in support of his Response. It also showed that the Domain Name was not connected to a nameserver between 1 February 2003 and 18 May 2003, after which the Domain Name remained registered on different nameservers in the Netherlands. These facts appeared to corroborate the Respondent’s contention that he initially registered the Domain Name in New Zealand and then moved to the Netherlands while keeping the Domain Name.
The Panel came to the conclusion that the Domain Name was originally registered and then possibly allowed to lapse, or that accurate records were not kept by the relevant Registry and/or registrars. The Panel concluded that it was more likely than not that the Respondent registered the Domain Name before 7 April 2003 and found the Respondent’s claim that he registered the Domain Name around 1996 and started using it in 2000 to be credible.
All things considered, the Panel found in favour of the Respondent, ruling that it was more likely than not that the Domain Name was originally registered by the Respondent before 2001, when the Complainant was first established and filed its trade mark. The Respondent could therefore not have known of the Complainant’s rights and did not register the Domain Name in bad faith. Furthermore, even if the Domain Name had been registered a few years later in 2003, the Complainant had not shown conclusively that at such time the Respondent would have done so to target the Complainant’s recently acquired rights.
As per the Respondent’s request, the Panel considered the issue of “Reverse Domain Name Hijacking”, 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”. The Panel therefore reviewed the overall circumstances of the case, namely that:
- it was possible that the Complainant had believed that the Domain Name was registered in 2003 when it was established and using the term “NLIX”;
- the Domain Name did not resolve to an active website; and
- the Respondent admitted in correspondence prior to the filing of the Complaint that he intended to use the Domain Name for a project which he abandoned, and was only willing to transfer the Domain Name to the Complainant for a considerable amount.
In light of this, the Panel was not of the opinion that the Complaint should never have been made and accordingly declined to make a finding of Reverse Domain Name Hijacking.
Comment
The decision serves as a reminder to brand owners considering filing a UDRP complaint that the date of registration is key when it comes to bad faith.
The decision is available here.
