Dreyfus

The independent objector (IO) has known a severe setback in the conflict against the company Amazon on the delegation of the extension <.amazon>.

Having been appointed by ICANN to represent the interest of the online community as regard to the delegation of new extensions, the IO could take charge of questions concerning public interest and the community’s objections when none objected to the application.

In the present case, the IO argued for a “substantial opposition” of the Amazonian communities against the claims of the company Amazon on the delegation of <.amazon> as well as its equivalents in Japanese and Chinese characters.

The Internet giant defended itself by highlighting the lack of proof as regard to the existence of this “substantial opposition” and the damages which could be caused by the Amazonian communities in case of <.amazon> delegation. Furthermore, as outlined by the expert Lucas G. Radicati di Brozolo, the community does not seem to have suffered from the use of the domain name <amazon.com>.
If this ground is sufficient for the Expert to reject the objection then he has analysed the independence of the objector in an incidental manner in accordance with the request of Amazon.

The famous online marketplace highlighted that there is a conflict of interest arising from the close ties between the IO and the government representing the Amazonian communities (Brazil and Peru) whereas he can act only on behalf of Internet users. Thus, his objection would only aim at formalising the objection of the governments. Alain Pellet denied the charges by affirming that the link simply results from a “normal average social life”.

This vision of the “social life” won’t be shared by the expert of the ICC. Based on objective criteria, he asserts that the ties between the IO and the two major representatives of the Amazonian communities lead to justifiable doubts as to his independence. As far as the importance of ensuring neutrality, independence and impartiality of the IO’s office and of the overall process of dispute resolution for gTLDs are concerned the objection of the claimant company on the IO’s independence must be welcomed. What image will ICANN and the candidates to the contracts of delegation of new extensions will project with a non-independent Independent Objector?

This debate is not new… The issue of the independence of the IO has in vain been raised against the IO’s opposition on the delegation of <.patagonia>. The counsel of the applicant company had not only highlighted the ties of Alain Pellet with Argentina and Chilli which have constantly designated him as arbitrator in different international litigations but also with his team of counsel at the ICC. The representation of the Argentine Republic by Mr Daniel Müller in the case Certain Pulp Mills on the River Urugay in 2006-2010 or the representation of the Chilean Republic by Mr Samuel Wordsworth concerning a maritime dispute with Peru were thus exposed. Finally, the presence of Héloïse Bajer-Pellet who is presumably the daughter or daughter-in-law of the Professor Pellet in the board also gives rise to concerns regarding the notion of independence as interpreted by IO.

It is neither necessary to call down anathema on the IO nor challenge his goodwill. However, one can blame some sort of regrettable clumsiness.

There is a need to consolidate the IO’s practices in the realisation of its mission in order to reassure the applicants of new gTLDs domain names on the seriousness of delegation operations as regards to their investment of time and money.

The delegation of <.amazon> generates a lot of discussion: the Governmental Advisory Committee (GAC) has advised the Executive Committee of ICANN to withdraw this extension. This victory undoubtedly constitutes a major asset for Amazon to convince of the contrary!

The .CEO gTLD has been open for registration since 28 March 2014. This is a highly sought after gTLD as it enables corporate executives to protect their identity on the Internet.

We strongly recommend registering the names of your leaders as a pre-emptive measure. Leader names are seldom registered as trademarks, meaning that UDRP and URS protection mechanisms are usually ineffective.

Our firm remains at your disposal for any further queries and to assist you in relation to pre-emptive registration.

The Trademark Clearinghouse (TMCH) is a mechanism allowing trademark owners to introduce data about their trademark in a centralised database before and during the launch of the new domain names gTLDs. As such, it notifies the trademark owners as soon as an identical domain name bearing the new gTLD is registered by a third party. Besides, it allows them to benefit from a priority right on the registration of their domain names during the Sunrise Period.

The notifications have been sent from February 3, which is the date where “.شبكة” gTLD meaning “.web” has become active. Since the launch of the new gTLD programme by ICANN, around 180 000 domain names have been registered. Nevertheless, the TMCH has sent around 17 500 notifications to the trademark owners, amounting to 10% of the registered domain names in the new gTLDs!

According to Jan Corstens, the TMCH’s project director, with numerous users “seeking to get their hands on new domain names at the earliest opportunity”, trademark owners who are not yet registered to the TMCH take a significant risk.

In the upcoming years, numerous gTLDs will come to life. “For brands and businesses to take full advantage of the array of new opportunities these launches will provide, they must take action now” added Corstens.

But the TMCH is not without flaws. Firstly, because it does not prevent third parties from registering domain names reproducing the trademarks. Secondly, because it detects solely domain names reproducing the trademark identically, without taking into account typosquatting cases.

In spite of these limitations, the Trademark Clearinghouse functions properly and reveals to be effective as shown by the 17 500 notifications sent in short notice to trademark owners.

Dreyfus law firm is a TMCH accredited agent and can help you to resolve your domain names disputes and to consolidate your presence on Internet. Feel free to contact us for any information.

Between June 2012 and March 2013, trademark holders could file objections to new generic top-level domains applications before the World Intellectual Property Organization (WIPO). Overall, 69 objections have been filed, among which only six were not achieved.

The rulings were made by 49 experts, well-known for their consistency and expertise, and decisions were taken by panels of one or three experts. They based their ruling on the gTLDs Applicant’s Guidebook available here. For an objection to be upheld, it had to prove that the applied-for gTLD:

• Took unfair advantage of the distinctive character or the reputation of the sign, or
• Unjustifiably impaired the distinctive character or the reputation of the sign, or
• Otherwise created an impermissible likelihood of confusion with the sign.

According to Erik Wilbers, director of WIPO Arbitration and Mediation Center, “this test reflects the particular dynamics of the use of trademarks on the internet”.
The signs used as a basis for the objection could either be a trademark or a name or acronym of an Intergovernmental Organization (IGO). However, objections were won only where there was proof of substantial use of the early sign. As a result, experts rejected objections based on trademarks, registered only as a means of blocking an application. The objector’s good faith was therefore a determining criterion for experts.

Half the cases were filed by complainants in the United States, and two thirds were filed by another applicant to the same string. The report further states that most of the objections were related to common words registered as trademarks, such as <.home> or <.music>. According to the report, the <.direct> gTLD was applied-for with the sole purpose of infringing the rights of “The DirecTV Group”. Hence, the experts upheld the objection.

Overall, only four objections have led to the revocation of applications for new gTLDs.

Although mediation procedures and hearings were provided for by the Applicant’s Guidebook, they have not been used during the objection procedures.

The existence of the pre-delegation Legal Rights Objections mechanism, including published decision criteria and consideration factors, has prevented a number of potentially improper gTLD applications from being made.

The WIPO report is available here.

On February 5, 2014, the domain name <canyon.bike> was registered anonymously with Godaddy.com, a registrar company. German company Canyon Bicycles GmbH responded quickly by filing an UDRP complaint.

WIPO panels usually do not take into consideration top – level suffixes such as .com or .fr. Yet in the present case, the Panel found that the .bike domain was equally relevant, not to assess the similarity between the disputed domain name and the trademark, but because it “describes a core product of the Complainant”, namely bikes. The Panel found that “given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach.”

This is however not the first time that such an approach has been used. The registrant of the domain name <tes.co> was found to be in violation of the trademark rights of Tesco, notwithstanding the dot between “tes” and “co.”

The Panel found that the three requirements for a successful UDRP complaint were satisfied, namely: the disputed domain name is identical or confusingly similar to the trademark, the registrant has no rights or legitimate interests in respect of the disputed domain name and the disputed domain name has been registered and is being used in bad faith. In the present case, both the reasoning and the decision of the Panel appear to be entirely justified.

With the arrival of new gTLD domain names on the market, cybersquatters are rushing to register the domain names of reputable brands. A few days after.clothing was made available, the domain names <adidas.clothing>, <burberry.clothing> and <tommyhilfiger.clothing> had all been registered.

Based on the arrival of hundreds of new suffixes, this decision was long overdue and must be welcomed. This decision will be useful to fight against cybersquatting. The general enthusiasm for the opportunities offered by the new suffixes must not leave room for cybersquatting which would be detrimental to the rights of trademark owners.

Dreyfus & associés specializes in disputes regarding domain names. For more information, feel free to contact us.

Established in 1998, ICANN regulates inter alia the allocation of domain names on the Internet. It has global jurisdiction and its decisions are binding de facto on States. Nevertheless, ICANN is a corporation created under Californian laws, which is hence subject to the California Attorney General and which ultimately falls under the United States Department of Commerce.

And this is all that is alarming the European Union. Following revelations of large-scale surveillance by the U.S National Security Agency, the European Commission is concerned about the lack of transparency of Internet governance. In a press release dated February 12 2014, it proposed a major reform, calling for “a more transparent, accountable and inclusive governance.”

The Commission proposes in particular concrete actions such as the establishment of an agenda for the change in the management of ICANN and IANA (Internet Assigned Numbers Authority), the creation of guidelines for Internet governance, or the establishment of a global process for major decisions. The main objective is to empower the various Internet actors.

In this regard, the Vice-President of the Commission Neelie Kroes stated that “the pluralism of actors on the Internet is an excellent driving force for innovation” and that “Europe must play a strong role in defining what the net of the future looks like.”

In the wake of revelations of large-scale surveillance and the arrival of new domain name extensions on the market, transparent and accountable governance appears to be essential.