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Domain name industry news
.SPA springs to life
The .SPA TLD, which is primarily being marketed as a namespace for the spa and wellness community via its website, opened up registrations for general availability on 12 October 2021.
Although the .SPA TLD is most closely associated with health resorts, cures and hydrotherapy (the word “spa” originally comes from Latin and is the abbreviation for sanus per aquam or “health from water”), it is also being marketed to the makers of hot tubs, jacuzzis and other equipment suppliers to the spa industry. In addition to this, and in a different sphere altogether, the TLD is being marketed to companies in countries such as France and Italy, where some of the most common company forms go by the acronym “SPA” (for example “société par actions” in France and “Società per azioni” (S.p.A.) in Italy).
The general availability phase for .SPA domain names follows a landrush registration period that ran from 26 May to 1 October 2021 during which applicants had to prove their bona fides as either members of the spa and wellness community, residents of the town of Spa in Belgium, or show that they were a “SPA” acronym company. The same requirements apply during general availability.
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New .ZUERICH extension
The new generic Top Level Domain (gTLD) .ZUERICH has recently launched. It is the official extension for the city of Zurich, which is the largest city in Switzerland and the capital of the canton of Zurich situated in the north central region.
The .ZUERICH Registry sees the extension as the future of the region as well as a way of reinforcing its local identity and setting it apart from other regions. For this reason the eligibility is reserved solely for companies registered in the canton's commercial register as well as public organisations headquartered in the canton of Zurich. The requested domain name must also match the applicant’s company name, abbreviation, or services.
The launch is taking place in several phases:
Sunrise Period: 30 August 2021 – 29 October 2021
Companies that had a valid trade mark registered in the "Trademark Clearinghouse" were able to register the corresponding domain name under .ZUERICH.
Limited Registration Period: 30 September 2021 – 29 October 2021
Public authorities having an administrative office in the canton of Zürich were able to register domain names under .ZUERICH.
General Availability: from 22 November 2021
Any entity fulfilling the eligibility criteria will be able to register .ZUERICH domain names as from 22 November 2021. During this phase there will be a degressive fee structure running for a 10-day period until 1 December. After this, registrations will be on a first come, first served basis with the normal fee rate applied, provided the eligibility requirements are met.
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CIRA partners with ScamAdviser to combat fraudulent sites
CIRA, the Canadian domain name Registry, has recently announced a partnership with ScamAdviser aimed at strengthening its anti-fraud capabilities. According to CIRA, since the start of the COVID pandemic, Canadians have become increasingly susceptible to online scams because of increased online shopping.
The partnership with ScamAdviser, a company that provides anti-scam technology which “helps consumers making their online shopping decisions by rating websites with the “ScamAdviser Trust Score”, will result in the integration of protection against fraudulent websites into CIRA’s Canadian Shield. The Canadian Shield firewall service aims to provide protection from malware, phishing and other cyber-attacks, as well as providing “online privacy and security to individuals and families across Canada”. According to CIRA, the partnership with ScamAdviser will provide an additional layer of protection against online scams and fraudulent websites.
According to Statistics Canada, 82% of Canadians shopped online in 2020 compared to 73% in 2018, and it would not be surprising if this figure continues to increase. CIRA sees the partnership with ScamAdviser as allowing Canadians to shop more safely online as they will be able to use the CIRA Canadian Shield and ScamAdviser’s anti-scam technology by downloading these protection services into their devices. ScamAdviser uses a specially developed algorithm that continuously “tracks and crawls” websites looking for scams. As a result, an online shopper will be blocked from accessing a particular website that has high fraud scores, which will protect users from possible theft and mispresented products.
Tanya O’Callaghan, vice president, Community Investment, Policy and Advocacy, CIRA, has stated that: “Since the launch of CIRA Canadian Shield, our goal has been to make the internet safer for Canadians. Trust is critical to the internet, and with this partnership with ScamAdviser, we are taking another step forward to protect Canadians from online scams, continuing our mission to build a trusted internet for everyone.”
To visit CIRA click here.
To visit ScamAdviser click here.
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Domain name recuperation news
First come, first served
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (the UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of the domain name gruporochas.com, finding that the Complainant had failed to prove that the Respondent had no rights or legitimate interests and that the Respondent registered and used the disputed domain name in bad faith.
The complainant was Interparfums SA France, a French company. It operated in the field of fashion and perfume and owned several trademark registrations for ROCHAS, including the following:
- French trademark Registration No. 1436306 for ROCHAS, registered on 20 November 1987;
- United States trademark Registration No. 75551139 for ROCHAS, registered on 29 August 2000;
- International trademark Registration No. 697119 for ROCHAS, registered on 28 July 1998 and designating a number of countries including Spain.
The Complainant also owned several domain names reflecting or including the trade mark ROCHAS, including rochas.com.
The Respondent was Walking Styles, a Spanish corporation.
The disputed domain name, gruporochas.com, was registered on December 2006 and redirected to a website consisting of an index default page.
To be successful in a complaint under the UDRP, a complainant must satisfy the three elements set forth in the Policy under paragraph 4(a):
(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
The purpose of the first element is to determine whether the Complainant has a bona fide basis for filing the complaint. In the present case, the Panel found that the Complainant had trademark rights in the name ROCHAS both by registration and acquired reputation and that the disputed domain name gruporochas.com was confusingly similar to it.
The Panel noted that it is well established that the addition of descriptive terms or letters, such as "grupo" in this case, (meaning "group" in Spanish) to a domain name does not prevent a finding of confusing similarity between the trademark and the disputed domain name. Moreover, the generic Top-Level Domain, here ".com", may be ignored for the purpose of assessing the question of confusing similarity.
Under the second element, the Panel noted that, while the Complainant has the burden of proving the three elements of the Policy, this burden can be quite difficult to meet when what must be proven is a lack of rights or legitimate interests in the disputed domain name, in other words a negative circumstance.
There are several ways in which a respondent may demonstrate rights or legitimate interests in a disputed domain name, examples of which are set forth in paragraph 4(c) of the Policy:
(i) the respondent using, or making 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 before being put on notice of the dispute; or
(ii) the respondent having been commonly known by the domain name, even without having acquired any trademark rights; or
(iii) the respondent making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.
In general, a complainant is required to make a prima facie case and the respondent must then demonstrate otherwise. In this case however, while the Complainant asserted that the Respondent had no rights or legitimate interests in respect of the disputed domain name since it had not been authorised by the Complainant to register the disputed domain name nor to use its trademark within the disputed domain name, the Respondent provided evidence that its Sole Administrator bore the name Rochas. According to the Panel this sufficiently corresponded to the disputed domain name and so it therefore found that the Complainant had failed to meet its burden under the second element of the Policy.
Given this there was no need for the Panel to go on to consider the third element of the Policy as the three elements are cumulative. However, nevertheless the Panel found that no bad faith could be established because the disputed domain name corresponded to the surname of the Respondent's Sole Administrator, and the Complaint was therefore denied.
Finally, the Panel also denied the Respondent's request to find that the Complainant was guilty of Reverse Domain Name Hijacking (ie using the Policy in bad faith to attempt to deprive a registrant of a domain name). The panel declined to find that the Complainant had acted in bad faith in bringing the Complaint since it did not know or could not have known that it would not succeed on the second and third elements of the Policy. In this case, the surname of the Respondent's sole Administrator was identical to the Complainant's trademark ROCHAS, but this could not have been known by the Complainant as it did not appear in the public WhoIs and the domain name had never been used.
Comment
This decision illustrates that, if several different parties may have rights to a domain name, the principle of first come, first served is paramount. It also underlines what can happen if such rights are not immediately apparent to those with competing rights, ie the filing of unnecessary complaints under the Policy. To try and avoid this, registrants can ask their registrar to ensure that their details are available in the public WhoIs (many registrars now mask almost everything by default, even company information, in the belief that this is needed to comply with data protection regulations). In addition, potential complainants should try and find out as much as possible about registrants before filing against them, for example by searching historic WhoIs details, examining the website history and sending cease and desist letters (using an anonymous address in the WhoIs or a registrar contact form, for example). It is possible to withdraw a complaint upon disclosure of the underlying WhoIs information, but it is best to try and avoid having to do this as it will result in wasted costs.
The decision is available here.
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Complaint out of the clear blue sky
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 SkyCell AG, a Swiss company providing hybrid containers for the pharmaceutical industry and related services.
The Respondent was Joubin Safai, an individual based in the United States.
The disputed domain name, skycell.com, was registered in 1995 and purchased by the Respondent in 2008.
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 trademark 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.
With regard to the first limb, the Complainant submitted that it owned various trademark registrations for the mark SKYCELL, the earliest with a filing date of 2013. The Respondent did not dispute this and the Panel found that the disputed domain name was identical to the Complainant's trademark. The Panel also noted that the registration date of the Complainant's trademark was not relevant to assess the existence of rights under the first limb of the UDRP. The Panel therefore considered that the Complainant had satisfied the first requirement under the UDRP.
As far as the second requirement was concerned regarding the Respondent's rights or legitimate interests, the Complainant pointed out that its SKYCELL trademark was so well-known in connection with the Complainant’s products and services that it was inconceivable that the Respondent could now make either bona fide commercial use or legitimate noncommercial or fair use of the disputed domain name. Furthermore, the Complainant argued that the Respondent had no relevant trademark rights, had not commonly been known by the disputed domain name, and had never used it. The Respondent strongly disagreed with the Complainant by asserting that he was a domain name investor who had owned over 500 domain names and had never been accused of cybersquatting in 20 years. The Respondent underlined that the disputed domain name was composed of two dictionary terms, “sky” and “cell”, which he considered to fit well with potential communications and cellular uses. In addition, the Respondent provided evidence of his purchase of the disputed domain name in 2008 and also submitted proof of the acquisition of two similarly composed domain names in the same year, skyferry.com and skygig.com. Most importantly, the Respondent contended that he was unaware of the Complainant when he purchased the disputed domain name in 2008, given that the Complainant commenced activity in 2013.
In view of the evidence presented by the Respondent, the Panel stated that it was indeed impossible for the Respondent to have acquired the disputed domain name with knowledge of the Complainant. The Panel then underlined that merely registering a domain name comprised of a dictionary word or phrase does not by itself automatically confer rights or legitimate interests on a respondent. However, a registrant may obtain such rights if it uses or intends to use a domain name comprising dictionary terms in connection with those terms and not to target any third-party trademark. The Panel pointed out that, despite the fact that the Respondent had not been using the disputed domain at all, the Respondent had provided evidence that he acquired it with the intention that it be used in connection with possible communications or cellular uses. Taking all these circumstances into consideration, the Panel therefore considered that the Complainant had not satisfied the second limb.
Turning to the third requirement of the UDRP, the Complainant asserted that the disputed domain name had been registered and was being used in bad faith. Moreover, the Complainant contended that it was difficult to formulate a claim concerning bad faith given that the identity of the Respondent was unclear. The Complainant also speculated that it could not be excluded that the disputed domain name had been registered to disrupt the Complainant's business or for the purpose of selling it to the Complainant or a competitor of the Complainant. According to the Complainant, the passive holding of the disputed domain name suggested the Respondent's bad faith. In his reply, the Respondent reiterated his arguments relative to the second limb of the UDRP and added that he had never used the disputed domain name in any manner that would target the Complainant. Finally, the Responded also noted the Complainant’s admissions that its submissions as to bad faith were speculative.
The Panel didn't miss the opportunity to comment on the Complainant's argument relative to the identity of the Respondent. The Panel highlighted that, although the Complainant had an opportunity to amend its Complaint after receipt of the Registrar-disclosed Respondent details, it merely added the Respondent’s name. Furthermore, the Panel found that the Respondent could not have registered the disputed domain name in bad faith given the fact that the Complainant did not exist when the disputed domain name was acquired by the Respondent. The Panel also stated that the Complainant had failed to provide evidence of the Respondent's bad faith use of the disputed domain name. Accordingly, the Panel found 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 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 decided to make a finding of RDNH as the Complainant had not provided any evidence to demonstrate or even infer that the Respondent had registered the disputed domain name with knowledge of the Complainant’s trademark and in order to target it, rather than owing to any inherent value.
Comment
This decision highlights once again how having a trademark by itself does not necessarily mean that a trademark holder will succeed in obtaining the transfer of a domain name, even if it is identical to such trademark. This is particularly the case when a disputed domain name was registered before a complainant's registration and use of a trademark. The decision also serves as a reminder of how important it is for complainants to avoid presenting speculative arguments.
The decision is available here.
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Evidence of targeting is key 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 the transfer of a Domain Name consisting of a term commonly used as a female name due to the lack of tangible evidence of the Respondent’s intent to target the Complainant’s trademark at the time of registration of the Domain Name.
The Complainant was CECIA, a French company registered in 2000, with three offices and 42 employees all based in France. The Complainant’s name CECIA was the acronym for “Cabinet d’Etudes et de Conseil en Industrie et Agroalimentaire”, which designated its consulting services for the food processing sector. The Complainant owned two French trademarks for CECIA, the earlier of which was registered in 1990. Its parent company, IDEC Group, registered the domain name cecia.fr in 2018, which resolved to a website both in French and English providing information about the Complainant and its services.
The Respondent was Abid Ishaq, a domain reseller based in Pakistan. He operated a website under his business name “AbidNetwork.com”, where he promoted the sale of his portfolio of domain names, including the Domain Name.
The Domain Name was cecia.com, which was acquired by the Respondent through a public auction at the end of 2020 after the Domain Name was allowed to lapse. It resolved to a webpage hosted by the registrar, which allowed Internet users to request price information about the Domain Name. It was also listed for sale at the registrar’s website for the price of USD 6,888.
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 trademark 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, since the Domain Name clearly consisted of the Complainant’s CECIA trademark the Panel found that the Domain Name was identical to the trademark in question. The first limb was therefore satisfied.
With regard to the second limb, the Complainant claimed that the Respondent was never known as “Cecia”, nor was he related to the Complainant’s business or authorised by the Complainant to make use of the CECIA trademark in a domain name. The Respondent countered that the term “Cecia” was more commonly used as a female name and therefore was not exclusively and famously associated with the Complainant. According to the Respondent, the mere registration and offering for sale of a non-exclusive and common term like “Cecia” was not illegitimate unless the Complainant was able to prove that the Respondent’s registration was specifically motivated by the Complainant’s CECIA trademark. The Respondent referred to his practice of registering domain names incorporating common words and phrases and asserted that, due to the lack of worldwide reputation attached to the Complainant’s trademark, his real intent was to resell a non-exclusive female name to people who may have a legitimate interest in buying the Domain Name for purposes unrelated to the Complainant.
The Panel found that it was not necessary to make any findings concerning the Respondent’s rights or legitimate interests, given its subsequent conclusion on bad faith.
As far as the third limb was concerned, the Complainant contended that its CECIA trademarks were registered long before the Domain Name was registered and that all the top results of an Internet search for “cecia” related to it and its business. In the Complainant’s opinion, it was therefore clear that the Respondent had registered the Domain Name in an attempt to target the Complainant. In response to the Complainant’s contentions, the Respondent first pointed out that a Google search for “Cecia” conducted outside France mostly related to the female name “Cecia” rather than the Complainant. The Respondent further submitted that the Domain Name was likely to be previously held by the Complainant via a privacy service until it lapsed in October 2020. The Respondent acquired the Domain Name in December 2020 as he was engaged in the acquisition of various short and memorable domain names at public auctions and he perceived the term “Cecia”, as a female name, had value for potential resale. The Respondent particularly underlined that the term “Cecia” was more well-known and in all likelihood more valuable when it referred to a female name than when it referred to the Complainant, a small business located in France with three offices and 42 people. As a domainer located in Pakistan, the Respondent claimed that he had no duty to know about the status of small businesses in France, nor of the French trademark register.
Presented with the two Parties’ arguments, the Panel pointed out that the key issue was to determine whether it was more likely than not that the Respondent was aware of the Complainant or its CECIA trademark at the time of acquisition of the Domain Name and that he intended to benefit unfairly from that trademark and/or to damage the business of the Complainant. To answer this question, the Panel first noted that the term “Cecia” was not only a relatively common female name but was also an acronym for various five-word combinations (including the Complainant’s full name as mentioned above). The Panel then highlighted that the Complainant’s reputation was only established within France, given that all its projects were carried out in France and it only had French trademark rights. Furthermore, the Complainant could not rely on its parent company’s global renown to ascertain its own reputation since the Complainant was the only affiliate of the group to use the company name “Cecia”. The Panel also agreed that the Internet search results provided by the Complainant were evidently impacted by the fact that the search was only carried out in France. As evidence, there was only one result related to the Complainant in the first three pages of text results provided by the Respondent, who conducted the search outside France.
Although the Panel did not exclude the possibility that the Respondent may have been aware of the existence of the Complainant through his pre-registration Internet search, it noted that prior awareness of the Complainant did not by itself demonstrate the Respondent’s intent to unfairly benefit from the reputation and goodwill attached to the Complainant’s CECIA trademark. Based on the evidence showing that the term CECIA was mainly associated with a female name and given that the Respondent’s domain name portfolio also included domain names incorporating female names, the Panel found that the Respondent’s explanation for his choice of the Domain Name (i.e., reselling a non-exclusive female name to people who may have a legitimate interest in buying the Domain Name for purposes unrelated to the Complainant) was not lacking in credibility. In this sense, the price of USD 6,888 at which the Respondent offered the Domain Name for sale only reflected the Domain Name’s inherent value as a personal name or as a short acronym with multiple actual and potential meanings unrelated to the Complainant and therefore was not indicative of bad faith as per paragraph 4(b)(i) of the UDRP (registering the disputed domain name primarily for the purpose of selling it to the Complainant).
In view of the above and in the absence of any other indicia of bad faith (for example nothing on the Respondent’s webpage had any particular connection to the Complainant), the Panel didn’t find it more likely than not that the Respondent had attempted to take unfair advantage of the Complainant’s CECIA trademark, hence his registration and use of the Domain Name was not in bad faith. The third limb was therefore not satisfied and the Complaint was denied.
Comment
This decision is a good example of how important it is for brand owners to provide convincing evidence to establish a respondent’s intent to benefit unfairly from their trademark at the time of registration, and not just their potential awareness of it. This is particularly the case when a trademark is distinctive in one context but not in another, and may not exclusively refer to the Complainant. In the present case, the mere fact that the term CECIA was identical to the Complainant’s trademark pursuant to a general Internet search did not necessarily mean that the registration of the Domain Name would automatically be considered to be in bad faith. A more careful analysis of a respondent’s real motive behind the registration and subsequent use of a disputed domain name is therefore required to exclude any eventual legitimate speculation.
The decision is available here.
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