Dreyfus

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.

The new gTLD domain names like .HOME, .BIKE or .PARIS are emerging on the market. Some take advantage of these launches to infringe well-known trademarks and domain names with these gTLD are already subject to UDRP procedures.

On 5 February, the domain name <canyon.bike> has been registered by a privacy shield service at the registrar Godaddy.com.

The German company Canyon Bicycles GmbH has promptly filed a UDRP complaint (Uniform Domain Resolution Policy) at World Intellectual Property Organisation (WIPO). The company intends to act under its intellectual property rights as it is the holder of several Canyon trademarks since 1993.

This complaint is the first UDRP procedure since the introduction of the new gTLD domain names on the market. IBM has also filed two complaints concerning the domain names <ibm.guru> and <ibm.ventures>. However, it concerns the URS procedures (Uniform Rapid Suspension). Unlike the UDRP procedures, the aim is not to result to the transfer or cancellation of the domain name but simply to obtain its suspension. On 12 February, the expert of National Arbitration Forum (NAF) has favourably acceded to the request of IBM and has ordered the suspension of the two domain names.

More than 1000 gTLD domain names will be spread out the coming months and along with these expansions conflicts will intensify. It will be interesting to see which of them will have an interest for the registrants as for the gTLD .CO. The registrant of the domain name <tes.co> was considered infringing the trademark of the company Tesco whereas the extension was not taken into consideration during the assessment of the similarity between the trademark and the domain name.

While the new top-level domain names extensions appear on the market, the Trademark Clearing House (TMCH) has revealed a report highlighting an alarming risk of cybersquatting in relation to major US companies’ domain names.

The TMCH is a mechanism set up by ICANN allowing the protection of trademark owners in the expansion of new top-level domain names. It allows the reporting of data related to trademarks in a centralised database before and during the launch of new top-level domain name extensions.

The TMCH study made on new extensions like <.web>, <.online>, <.blog> <.shop> and <.app> demonstrates that United States’ 50 most famous brands have all been pre-registered by unofficial parties. It further reveals that half of these trademark owners do have any principle domain names in existing extensions like <pepsi.us> or <kelloggs.net>. Also, Jonathan Robinson, Strategic Consultant to TMCH considered that “all brand names are at risk of intellectual property infringement online as the new TLDs are rolled out”.

Nonetheless, mechanisms have been set up to prevent these types of situations. Registration at TMCH therefore allows trademark owners to enforce their brands and to benefit from a preferential right of reservation during the priority period of Sunrise. Registration at TMCH also allows to be informed of all undue registration of domain names reproducing or imitating a trademark. Jonathan Robinson further stated that “prevention is better that cure” and that “by recording marks in the Clearinghouse, businesses will be safe in the knowledge that they have made the cornerstone investment in brand protection in new TLDs”.

More than 80% of the major US brands have already acceded to alternative dispute resolution procedures relating to domain names such as UDRP procedures. While cases of cybersquatting are expected to increase with the new top-level domain name extensions, the TMCH’s objective is to prevent such litigations.

If the aim of cyber squatters is to divert internet traffic on their websites by means of suggestive domain names, the medium-term objective is to negotiate at a reasonable price the domain names registered without the brand owners’ knowledge. The role of the TMCH in this context is essential for brand owners.

Dreyfus & associés is a TMCH accredited agent. For more information, please do not hesitate to contact us.