Dreyfus

On September 30, Sedo.com published the results of its survey carried out last August in which it interviewed 360 managers responsible for their companies’ marketing and advertising programs.

The survey revealed that 54% of those interviewed were not aware that the new gTLDs would already be available this year, and 62% felt that these new strings would only serve to increase confusion on the Internet, although 64% believe that the use of these new domains will be a success.

The possibility of obtaining an address that would be easy to memorize was approved by 35% of those surveyed and 28% stated that they would buy such addresses essentially for this reason.

88% of participants affirmed that none of their clients had planned to buy one of the gTLDs, whereas 59% of those interviewed plan to use a domain other than a .COM for an advertising campaign.

The survey also provided statistics concerning the use of domain names in the advertizing and marketing sectors and revealed that just over half of those surveyed (54%) had already bought a Web address in the past and that 62% did so for personal reasons and 55% for their company’s website. 33% bought a domain name specifically for a marketing or advertizing campaign and 26% did so for a particular product.

It is also interesting to note that half of those surveyed (52%) declared that they had bought a different domain name to the one originally intended. In this category, 29% said that the problem was lack of availability for the name, 3% said the price was too high and 20% cited both the above reasons. In relation to this, 32% have had to rename a product, a service or a campaign due to lack of availability or to the price of certain domain names.

Those interviewed were also reminded that ICANN developed the Trademark Clearinghouse to help trademark owners protect themselves. A majority of participants (86%) did not know about the Clearinghouse and 85% stated that they had never taken legal action in order to resolve a violation of trademark rights. For those who were aware of the existence of the Trademark Clearinghouse but who had never used it, 49% intend to do so but have not yet had reason to call on its services.
Other replies indicated that 26% of those surveyed are waiting to see if their new web addresses will be accepted and 26% said they were not worried about breach of trademark rights.

Finally, participants were asked to identify the 10 most popular new strings. “.app” seemed to be the most promising in terms of results, followed by “.inc” and “.shop”. The least-favored string would appear to be “.llc”.

The United States Polo Association has just struck with a mallet the claims of Ralph Lauren on the domain name extension <.polo> (http://www.iccwbo.org/products-and-services/arbitration-and-adr/expertise/icann-new-gtld-dispute-resolution/expert-determination/ ).

The Ralph Lauren Company wished to become the Registry Operator of the “.polo” string and had, to reach this goal, filed an application with ICANN. Managing this new gTLDs would have been a great opportunity for the New-York firm: it would have increased its visibility, reassured customers about the authenticity of its products online and most importantly linked to the “polo” – both the brand and its flagship product range – to their name on the Internet.

However, determined not to see the famous brand run away at full gallop with this extension, the American Polo Association took advantage of the opportunity to file an objection to the delegation of new gTLDs. This objection was open, notably to associations representing a delineated community. Indeed, until 13 March 2013, four types of objections were available:

• String Confusion Objections: The string is confusingly similar to an existing extension or to another applied-for gTLD string – delegating two or more similar TLDs could cause user confusion.
• Legal Rights Objections: The string violates the legal rights of the objector.
• Limited Public Interest Objections: The string contradicts generally accepted legal norms of morality and public order recognized under principles of international law.
• Community Objections: Substantial opposition to the gTLD application exists from a significant portion of the community that the gTLD string targets.

Thus, the U.S. Polo Association has filed a Community Objection against the <.polo> before the International Chamber of Commerce of Paris (ICC). The appointed expert has received this objection favorably.

The Panelist has considered that if Ralph Lauren’s Company Application were approved, the polo sports community would see its ability to promote polo and attract polo participants and fans severely affected. Moreover, such delegation may discourage potential sponsors and cause further economic loss. Consequently, the expert says that the string <.Polo> “cannot be monopolized, especially in view of the dependence of the polo sports community for its activities”.

There is no formal process to appeal community objection decisions under ICANN procedures. However, Ralph Lauren may be able to take action in court.

The Panel’s decision is not exempt from any criticism.

Indeed, even if the U.S Polo Association wants to fully exist on the Internet, neither it nor another association of this noble sport has applied for the delegation of the disputed extension <.polo>. Finally, the <.polo> won’t exist at all and – as emphasized by the expert – this fact will harm the polo community. The question of the legitimacy of the coexistence between the “polo” sport and the Ralph Lauren brand “polo” would have deserved thorough study.

The expert has aligned himself with the GAC recommendations, the committee representing governments before ICANN. The expert has especially mentioned the GAC former proposal to suspend more than 90 applications for gTLDs which contain generics words and which operate as exclusive access registries, and has also pointed to the GAC advice against Amazon’s application for <.amazon.>

Nevertheless, things change quickly in this field: ICANN has recently decided to allow the development of applied-for strings which operate as exclusive access registries if they change their contract terms to allow openness to others.

To be followed!

ICANN confirmed in early August that the use of dotless domain names is forbidden. All year round 2012, the reports and publications confronting ICANN and its committees to companies such as Google Inc. and public comments were numerous.

Indeed, the ICANN Security and Stability Advisory Committee (SSAC) and Carve Systems were strongly against dotless domain names whereas Google was arguing that with these names, it will be easier for internet users and companies to access information. The report of the public comments showed that an important number of comments were both in favour of adopting the SSAC recommendations as well in opposition to the recommendations.

But this simplification is not riskless, and ICANN is definite on this subject! Dotless domain names are source of confusions, since they generally allow the computer owner to access what’s inside his machine. If they were on internet, the private namespace data access would be impossible.
Moreover, some software programs are based on the fact that these domains never go on the internet and confidential information could be recovered without the internet user knowing.

This is why New gTLD Program Committee (NGPC) assures after investigating every risks related to dotless domain names that it is impossible to reduce them.

For lack of anything better, ICANN will not accept these domain names.

Argentina’s Network Information Centre (NIC) has recently adopted a new system for domain name registration.

Under this new system, applications must be made using one account per applicant on the registry operator’s website. Physical and legal persons applying from abroad must present a certified copy of their passport or the Minutes of their Incorporators Meeting, a copy of their articles of association and proof of power of attorney.

Each owner can thereafter reserve up to 200 domain names, receive alerts when a domain name becomes available and request the nullity of a domain name that has already been reserved by a third party if he can provide the necessary proofs of ownership.

Domain names could be automatically renewed up to an including October 27 2013. After this date, only registered users will be able to apply for renewal!

ICANN delegated the first 4 generic extensions on 21 October 2013.

شبكة (xn--ngbc5azd) – an Arabic word meaning “Web” or “Network”
Register: International Domain Registry Pty. Ltd.

онлайн (xn--80asehdb) – the Russian word for “Online”
Register: Core Association

сайт (xn--80aswg) – in Russian “Website”
Register: Core Association

游戏 (xn--unup4y) – the Chinese word for “Game”
Register: Spring Fields, LLC

We note that all these extensions are in non-Latin characters. We can only congratulate ICANN on this decision that enables non English-speaking users to be able to communicate in their own language.

The recent launch of the new gTLDs is opening up opportunities and projects to head off the competition. Several registry operators are allowing the registration of new domains under existing or recently-created extensions.

The digital domains .TEL

On October 15 2013 the registry operator Telnic launched digital domains comprised of 8 digits or more. Domain names such as “00442074676450.tel” or “0208-467-6450.tel” are available for registration on a “first-come, first-served basis”.

Re-opening of extensions .CO.DE and .CO.NU

The registry operator DNNext S.A. has decided to re-open for registration domain names under non-official extensions.CO.DE for Germany and .CO.NU for the island of Niue. It is important to note that these extensions are not affiliated to the official registers DE and NU but only to a single register DNNext.

A .NZ in competition with .KIWI

Over in New Zealand on October 11, the Council of InternetNZ approved for registration domain names under .NZ which will be in addition to third level registrations under extensions such as .CO.NZ, .ORG.NZ or .NET.NZ.

The registry operator DOT KIWI will offer for registration names in .NZ in addition to .KIWI in the next few months. They stress, however, that the registry operator’s main problem concerning these registrations is the fact that those who invested in a .CO.NZ will perhaps not be able to safeguard their domain in .NZ, due to lack of finance.

As we had previously announced, the Pioneer program for the first 100 names to subscribe to .PARIS was launched on September 16 2013 and will close to offers on December 16 2013.

In the light of this major project that should create numerous opportunities, a few details need to be outlined.

The Pioneer program launched by the city of Paris involves preselecting a hundred projects from those that have made a bid, with a focus on projects that would enhance the visibility of .PARIS from the outset. Two types of project are being encouraged in order to promote companies or associations linked to Paris.

The first type relates to concessions on generic names under .PARIS, for example boulangerie.paris or hotel.paris. In such cases, the city of Paris will be remunerated based on a share of project incomes.

The second type will promote the activities of firms and associations linked to Paris. In the context of these bids, the subscription costs will depend on the Pioneer category under which the company wishes to register its project:

• In the category of “ambassador” Pioneers, subscription costs could be as much as €100,000. These Pioneers will be strongly featured in the promotional communication campaign surrounding the .PARIS project.
• In the category of “business” Pioneers, the budget required will amount to a few thousand euros. These pioneers will also be included in the communication campaign but to a lesser extent.
• In the “ecosystem” category, start-ups and charities will benefit in particular from nominal subscription costs of around one hundred euros.
• In the “individual” category, the costs will only be tens of euros in order to let the ordinary citizens of Paris have their say.

In this Pioneer program, guarantees will be given in order to ensure that intellectual property rights are respected: the city of Paris will be installing a system of risk detection before any projects are selected! The intention is that each of the preselected projects (between 100-200) will be analyzed to ensure that there is no conflict with previously registered trademarks.

To achieve this, databases will be consulted (INPI, OHIM, WIPO) and there will be interaction with trademarks registered with the Trademark Clearinghouse. Once these checks are completed, a project could be rejected if there is a significant risk of conflict with recognized marks.

Once a project has been validated, a specific opposition procedure will be open to rights holders. Certain conditions will have to be met in order to use this procedure, which may be subject to further amendments:

• To be the holder of a verbal trademark registered before the month of July 2011, legally recognized in France and known in the public sector (nb: There will certainly be a degree of flexibility as to the trademark registration date. The aim here is to ensure that the mark had not been registered for the sole purpose of opposing projects and to avoid fraud. It remains to be seen how the question of public sector awareness will be defined.)
• The domain name Pioneer must be identical or confusingly similar to the trademark of the opposing rights holder.
• The Pioneer must not have a legitimate interest in the Pioneer domain name.
• The Pioneer domain name must have been solicited in bad faith, with the specific aim of interrupting the commercial operations of a third party, by preventing the name from being re-used or in order to draw away a third party’s customers.

This procedure is to be directly handled internally by the registrar of .PARIS and will only entail relatively limited costs.

Our office can advise you on the best strategy to adopt and will be happy to provide you with any additional information that you may require.

A Californian Federal Court(1) recently awarded Facebook $2.8million in damages in a case that involved 10 holders of domain names and 105 contested names.

The Court based its decision on the Anticybersquatting Consumer Protection Act (ACPA). This Act aims to crack down on the activities of cybersquatters and render legally responsible any person who, in bad faith, registers a domain name that is similar or identical to a trademark, well-known or otherwise, with the aim of making a direct or indirect profit. The text specifies that fines can be imposed from $1,000 to $100,000 per domain name.

Facebook had requested the maximum amount in damages, i.e. $100,000 per counterfeit domain name without differentiating between varying levels of abuse. Judgment was rendered by default since none of the accused appeared in court or even responded to Facebook’s complaint.

In order to evaluate the damages awarded against each of the defendants, the Court based its criteria on the ACPA but also on the circumstances of each individual case. In practice, even if all the defendants had acted in bad faith with deliberate intent, the Court decided to distinguish between differing degrees of malevolence and abuse.

The factors taken into account by the Court notably included:

• The number of counterfeit domain names: the Court considered that the number of counterfeit domain names held by each defendant was an indicator of bad faith and fixed thresholds from $5,000 to $25,000 according to the number of domain names registered by each of the accused.
• The way in which the word “Facebook” had been spelled: damages were doubled for defendants who had registered a domain name with the aim of deceiving consumers into thinking that they were accessing the official Facebook site, leading them moreover into divulging personal details.The Court awarded a further $5,000 in damages against cybersquatters who had left the spelling of the word Facebook unchanged. In addition, the fact of using the Facebook trademark correctly spelled alongside other words also spelled correctly was deemed to be even more misleading and was penalized by an increased fine of $10,000 per domain name. 
• The track-record of the counterfeiter: the amount of damages was also doubled for cybersquatters or typosquatters guilty of previous similar offences.

In this way, the Californian Federal Court applied in an appropriate manner the principles established by the ACPA, whilst sending a clear and dissuasive message to cybersquatters and typosquatters who attempt to misuse well-known internet trademarks.

Facebook is not the first company to act on the basis of the ACPA text. Other companies such as Microsoft(2) have already based their lawsuit on this text in the past in order to protect their on-line presence and their reputation. Rights holders protected in the United States can file a civil action based on the ACPA text irrespective of the defendant’s location. The judicial process is certainly a lot longer and more costly than a UDRP case, but the amount in damages awarded by American judges suggests that lawsuits based on the ACPA are likely to increase in future according to the specific aspects of each case. To be considered on an individual basis.

(1) California’s Northern District Federal Court, April 30 2013.

(2) Washington District Federal Court, Microsoft Corp. v Shah, July 20 2011.