Legal Watch: Two people file a complaint regarding the same domain name

Written by Dreyfus17/03/2022

When two people file a complaint regarding the same domain name, the domain name’s transfer isn’t necessarily granted to the trademark rights’ owner

The Uniform Domain Name Dispute Resolution Policy specifies in point 4) a) that the relevant disputes involve those where a domain name is “identical or confusingly similar to a trademark in which the complainant has rights”.

This is the case when the domain name has been registered and used in bad faith, when the registrant has no rights or legitimate interests and when the domain name registered by the domain name registrant is “identical or confusingly similar to a trademark or service mark in which the complainant has rights”.

Recently, the WIPO Arbitration and Mediation Center considered that, although the applicant had previous trademark rights, the transfer of the disputed domain name shall happen on behalf of the other complainants.

The complainants in this case were Victoria and David Beckham.

The first complainant, Victoria Beckham, a former member of the Spice Girls, is specialized in haute couture and commercialises clothes under her name on the website “www.victoriabeckham.com”. The trademark “VICTORIA BECKHAM” is notorious, especially in the United-Kingdom: it was designated as Designer Brand of the Year in 2011.

The second complainant is David Beckham, renowned for his soccer career, as well as for his professional collaborations with major brands.

He owns several trademarks, invoked in support of the complaint and in particular some registered in the United States “BECKHAM” No. 3342223, dated 20 November 2007, renewed, relating inter alia to clothing products and the trademark “BECKHAM” No. 4208454, dated 18 September 2021 in class 3, which includes perfumes. Thus, the trademarks cited in support of the complaint belong solely to him.

The Beckhams discovered the domain name <usbeckham.com> registered on 8 July 2020, after the registration of Mr Beckham’s trademarks. This domain name linked to a page selling clothing, handbags, shoes and accessories. The site was titled “BECKHAM® Official Online Boutique” and featured the header “BECKHAM” in a font similar to Victoria Beckham’s site. It also had a “Perfume” tab, which redirected to the <genewus.com> website, selling perfumes but also a range of swimwear bearing the name “Victoria Beck”.

Firstly, the expert observed that both complainants shared the same name BECKHAM, for which David Beckham had acquired trademark protection for perfumes and clothing. Hereby, the expert considered the consolidation of the complainants well-founded.
According to the expert the disputed domain name may generate a risk of confusion with the earlier trademarks as it incorporates the word BECKHAM.
Concerning the legitimate interest and the potential rights of the defendant, the complainants argue that they have not given any authorization to the defendant to use their name and that the latter held no rights on the sign “BECKHAM”.
The use of the domain name is confusing for products in competition with those of the complainants and have a title with the symbol ® implying that the respondent is the owner of the trademark “BECKHAM”. The term “Official” also suggests that the website is official. This demonstrates the respondent’s lack of good faith: the expert therefore considers that she has no right nor legitimate interest in the domain name.
Furthermore, with regard to the registration and use in bad faith, the expert considers that the applicants are very famous and that the defendant could not have been unaware of the applicants’ trademarks “BECKHAM”, given that she lived in London and in view of her interest in “high fashion” as mentioned on her website. Moreover, her name is not “Beckham”. However, this name has some significance in the world of high fashion through the applicants’ trademarks. The expert therefore considers that the defendant necessarily registered and used the domain name in bad faith.
Therefore, the complaint was accepted and the domain name was transferred to the first complainant, Victoria Beckham.

This ruling is interesting since most of the decision’s reasoning is based on Mr. Beckham’s trademarks. The trademarks in question were protected in particular for “clothing” and “perfumes”. Those same products are found on the disputed website.

A research reveals that there are several “VICTORIA BECKHAM” trademarks, but at first sight, they do not belong to Mrs. Beckham herself, but to her company. Although the company bears the same name, it was not a complainant in this litigation.

The consolidation of complainants makes it possible to consider that “2 become 1″ for the purposes of the complaint. Anyone of the complainants can obtain the disputed domain name whereas it is not decisive which one of them is mentioned as the actual trademark owner in the complaint.

Perhaps Victoria Beckham could have argued that she has common law rights regarding the name “BECKHAM”. However, these rights would have been in competition with those of her company.

(WIPO Arbitration and Mediation Center, Case n°D2021-1841, Victoria Beckham, David Beckham v. Contact Privacy Inc. Customer 1247653581/ Cynthia Panford)

Metaverse: is it necessary to register specific trademarks for protection?

Written by Dreyfus11/03/2022

*Image generated by DALL-E 3, Microsoft Version

The metaverse -a parallel virtual world which is booming in the Web 3.0 era- has become an unavoidable topic. This fictional world will combine prospectively and simultaneously virtual reality (VR), augmented reality (AR), blockchain, crypto-currencies, social networks, etc. Many companies are already planning to do business in this world following the company’s digital transition.

As a result, trademark applications covering products and services related to “digital virtual objects” have been multiplying since the end of 2021.

But how to effectively protect this new activity that calls for a whole new lexicon?

1.The metaverse, a new world for new ambitions?

In a few words, the metaverse can be defined as a fabricated virtual universe -mixing the words “meta” and “universe”, to designate a meta-universe in which social interactions would be extended and digitized. It seems to be directly inspired by the 1992 novel “Snow Crash” (“Le Samourai virtuel” in French) by Neal Stephenson.

This parallel digital environment embodies a new way to explore innovative and ambitious projects from a different perspective, before they take concrete shape in the actual world.

As an example, Aglet created its own range of sneakers, the “TELGAs”, after launching it as a digital collection for online games. The collection is also available on the OpenSea platform, alongside brands such as Nike and Adidas, who have stepped up to virtual collections in the form of Non-Fungible Tokens (NFTs).

NFTs, whose transactions are mostly hosted on the Ethereum blockchain, are essential components of the metaverse. This digital asset category, which is distinct from crypto-currencies such as Bitcoin and Ether, allows for authentic and unforgeable certification of the ownership of one of these virtual digital objects offered for sale in the metaverse.

The metaverse follows on from social networks and will undoubtedly allow companies to establish a strong online presence, beyond the operation of a traditional website.

Whether the metaverse is a trend that will last and become anchored in our culture is uncertain, though many large companies have already taken the plunge.

Before venturing into the metaverse, it is necessary to register specific trademarks, adapted to the goods and services of the metaverse. This will ensure efficient protection against infringement and will enhance the value of the company’s brand assets. In this respect, it is important to draft an appropriate wording for the trademark.

2.How to design an adequate and optimal protection?

When launching an activity into the metaverse, the definition of the goods and services should be careful considered as the crucial element of a trademark is its wording above all. The filing process for a trademark application with the INPI, EUIPO, or any other national industrial property office, will indeed guarantee, to some extent, a monopoly on goods and services determined. This will confer also a commercial value to the trademark, once it is registered by an industrial property office.

As a reminder, once a trademark application has been filed, it is impossible to add classes of goods and services and to add any additional good or service, nor to add goods or services. Only a modification in the sense of a restriction of the wording will be considered.

The most relevant classes, which will contribute to the wording, are classes 9 and 41.

Class 9 allows for NFT coverage, although the product may not be accepted as such. More explanatory wording will be required. For example, one can target “downloadable digital products, i.e. digital objects created using blockchain technology”. These goods can be of all kinds: clothing, works of art, etc.

Class 41 covers the components of entertainment. In this respect, MMORPGs, which are defined as interactive games, which by their nature and concordance are closely associated with the metaverse, could be covered in class 41.

When a virtual trademark is to be exploited through points of sale, services class 35 seems unavoidable in order to include, among other things, “retail store services for virtual goods”.

In a complementary vision, it will then be necessary to think of designating the corresponding goods in the classes that classically cover them.

3.Virtual trademarks registered in various sectors

In early February 2022, Pumpernickel Associates, LLC filed a trademark application for “PANERAVERSE” No. 97251535 with the USPTO. This filing, initiated for virtual food and beverage products, NFTs and the ability to purchase real products in the virtual world, demonstrates a definite willingness by the American company to deploy these outlets in the metaverse.

McDonald’s has also filed trademark applications (No. 97253179; No. 97253170; No. 97253159) for “the operation of a virtual restaurant offering real and virtual products” and for “the operating a virtual restaurant online featuring home delivery”. In addition, the U.S. fast food chain also plans to obtain a trademark for “on-line actual and virtual concerts and other virtual events” and other entertainment services for a virtual McCafe (No. 97253767; No. 97253361; No. 97253336).

These are not the only trademark applications filed at this time; Facebook and Nike pioneered this trend, followed by luxury, textile, cosmetics and perfume brands. L’Oréal, for example, has filed several registration applications for perfume brands from its portfolio, in their digital version, with the French National Institute of Industrial Property (INPI)

4.Conceptual considerations

In light of this unprecedented craze around the metaverse, one might wonder whether these immaterial goods, whose projected use is exclusively intended for virtual exploitation, should not come under a new particular category of products, not defined to date under the Nice Classification.

The addition of an ad hoc class dedicated to these virtual goods and services seems complex insofar as many of them could overlap with already existing products and services. The list could be very long.

In any case, drafting a trademark for the metaverse requires a meticulous definition of the goods and services concerned.

The Nice Classification, despite the successive trademark filings made since November 2021, does not include for the moment, in its explanatory notes or product suggestions, any reference to goods and/or services closely related to the metaverse or NFTs. Perhaps it will do so shortly in view of the developments encountered.

What will be the boundaries between the metaverse and the actual world? The question is a structuring one for trademark law and competition law. The European Commissioner Margrethe Vestager and the president of the US antitrust authority, Lina Khan, are wondering about “the right time to put in place competition rules in this emerging sector”.

Dreyfus accompany you in the protection of your brands in the metaverse era and to draft with you a wording of goods and services adapted to your activity.

Is it possible to invoke a trademark that is not protected in the defendant’s country?

Written by Dreyfus08/03/2022

The trademark invoked by the applicant does not necessarily have to be protected in the country of the respondent

WIPO Arbitration and Mediation Center ADMINISTRATIVE PANEL DECISIONVente-privee.com v. 郑碧莲 (Zheng Bi Lian)Case No. DCN2021-0004

In order for a UDRP complaint to succeed, it is necessary to prove a trademark right similar or identical to the domain name, generating a risk of confusion. Then, it must be established that the respondent has no rights or legitimate interests, and finally, it must be shown that the respondent has registered and used the name in bad faith.

In order to establish this bad faith, it is essential to show that the respondent has prior knowledge of the applicant’s rights and that the disputed registration is aimed at these rights. Being the owner of a trademark protected in the country where the defendant is established is therefore a considerable asset. However, it is not a requirement.
Vente-privee.com is a French e-commerce company that has been operating for 20 years in the organization of event-based sales of all kinds of products and services at reduced prices, including major trademarks.
At the beginning of 2019, Vente-privee.com began a process of unifying its trademarks under a single new name: VEEPEE. This rebranding was widely promoted internationally. It had previously secured trademark rights to the “VEEPEE” sign via a filing an EUTM in November 2017 and via an international trademark filed the same day covering Mexico, Monaco, Norway and Switzerland. Vente-privee.com also owns numerous domain names matching “VEEPEE” such as <veepee.es>, <veepee.it>, <veepee.de> and <veepee.com>.

Having detected the registration of the <veepee.cn> domain name reserved in 2018 by a China-based registrant, the company filed a complaint with the WIPO Arbitration and Mediation Center seeking the transfer of the name.
The likelihood of confusion was easily admitted by the expert, who considered the domain name to be identical to the applicant’s earlier trademarks. On this occasion, he recalls that the trademark does not need to be registered in a specific country for the assessment of the likelihood of confusion.

This is in line with the assessment of WIPO’s Overview 3.0, which specifies in its section 1.1.2, quoted by the expert, that in view of the international nature of domain names and the Internet, the jurisdiction in which the trademark is protected is not relevant for the analysis of the first criterion. Bearing in mind, however, that this factor may be important for the examination of the other criteria.

the Panel notes that the Respondent has no business relationship with the Complainant and has not received any authorization from it to reserve the disputed domain name. As the Respondent did not respond to the Complaint, the Panel finds that Vente-privee.com has established that the Respondent has no rights or legitimate interests in the disputed domain name.

Finally, on the issue of bad faith, the expert insists on the arbitrary nature of the name VEEPEE: “VEEPEE is a made-up word with no particular meaning in Chinese or English”. He also highlights the fact that the domain name has not been actively used, but on the contrary refers to a website in English, accessible to all, on which it is for sale.

Therefore, the expert orders that the disputed domain name <veepee.cn> be transferred to the Complainant.

This decision is a reminder that it is important to choose the right trademarks to be used in a UDRP complaint. Ideally, it is necessary to prove a registration in the country of the registrant, if possible prior to the domain name. In the absence of a registration in the relevant jurisdiction, it is important to demonstrate that the trademark is used and known outside the boundaries of its registration.

In this instance, we note that the disputed domain name is indeed subsequent to the applicant’s trademarks, but prior to the Vente-privee.com rebranding operation by almost a year. This information might have required analysis had the Respondent responded to the Complaint. Information that could have been counterbalanced, however, with the registration date of the name <veepee.com> (the <.com> targeting the international), which is very old: December 6, 1999.

Online Trademark Protection

Written by Dreyfus07/03/2022

Monitoring, protecting and promoting your trademarks online: these are the core business activities of the Dreyfus law firm.

Our team assists you to anticipate, secure and optimize your trademarks, allowing you to enhance your business.

A successful trademark registration does not mean that your trademark is automatically protected. Nonetheless, your trademark has an undeniable business value and as such warrants to be monitored and defended. One of the important issues is that public entities such as the INPI, EUIPO or WIPO are not required to notify prior trademark owners when a third-party applicant files an application for a similar or identical trademark. Since these organisms do not assess whether trademark applications are likely to infringe earlier trademarks, it is up to the applicants to perform a prior art search. In other words, careful trademark monitoring is very important for an optimal and durable protection of your trademark. However, identifying risks and responding accurately, effectively and timely to potential harms is not always obvious.

That is why the Dreyfus team helps you monitor and protect your trademarks online. First, we detect potential infringements, then we inform you in due time when a (strongly) similar or identical trademark is filed.

Thanks to our innovative Dreyfus IPweb® solution, we are able to monitor and automatically detect trademark filings that are identical or similar to yours and to take steps against any potential infringement before a similar trademark enters the market. IPweb® provides direct access to a company’s domain name monitoring services. It covers all social media networks such as Facebook, Twitter, Instagram, and LinkedIn, as well as advertising platforms such as Google AdWords. Your trademarks are constantly monitored and you will be swiftly alerted in the event of a breach.

After assessing the similarity of the signs and the products and services in question as well as your chances of success, we will inform you immediately and, if necessary, advise you on the steps that should be followed. As it is better to be safe rather than sorry, it is important to act as quickly as possible and to contact the third-party applicant at an early stage, by sending him a warning, a letter of formal notice or even by filing an opposition against the trademark application to ensure that the said applicant uses an alternative name for his/her products and/or services.

Detecting potential trademark infringements and securing your trademarks online

We report potential trademark infringements on the Internet and social networks and we provide you with personalized advice regarding your portfolio management strategy, including weaknesses that could hinder the development of your (digital) business and give rise to possible litigation.

In this regard, we offer you appropriate and personalized strategies to anticipate dangers, such as online fraud (i.e. phishing, fake websites, identity theft, forged emails, etc.) which requires immediate action as it can be significantly damaging to the image and reputation of your trademark and may generate a financial loss.

For compliance purposes, we can help you put in place a strategy to prevent any breach caused by domain names. This includes – in addition to monitoring your trademark among Internet domain names – monitoring of your trademark on other social networks (such as Facebook, Twitter, LinkedIn, Instagram, YouTube, Snapchat) to detect and respond appropriately to any new breach.
With our intuitive platform, Dreyfus IPWeb®, we allow our clients to have access to – and closely follow their trademark files online. Moreover, our clients have access to the results of the performed surveillance on trademarks, domain names, corporate names or social networks. With these trace and control tools, we help you restructure the management of your trademark portfolio in an easy and accessible way.

Online trademark audits

The next step consists of performing a trademark audit. It is a crucial step to get a global and transversal view of the potential value of your trademarks and to anticipate risks such as conflicts regarding ownership, the loss of rights on an unused trademark or the expiration of your trademark rights. With thorough online trademark evaluations, we will bring to light potential harmful situations and assess the risks and opportunities in relation with your trademark. Besides, trademark audits become important assets when negotiating licensing or assignment agreements.

Furthermore, the Dreyfus team offers you personalized recommendations to strengthen your trademark rights. The online assessment and promotion services offered by the Dreyfus team will allow you to have an accurate and global overview of your situation, from a legal, commercial and technological perspective.

(Pre)litigation

The Dreyfus law firm assists you with the defense and enhancement of your rights and helps you resolve your disputes efficiently, quickly and amicably. With its detailed knowledge of trademarks in the digital environment, our team helps you settle your disputes online, out-of-court and in a confidential, strategic and efficient manner. Thanks to its know-how and its many clients, the Dreyfus team follows continuously and closely ongoing issues and has an increased vision of current and future risks.

The Dreyfus team will help you successfully defend and enhance your trademark rights and will assist you with the resolution of disputes, infringement actions, problems relating to domain names, as well as during mediation and arbitration procedures. Have you discovered a website that infringes on your trademark? Do you have a French or European Union trademark or an international trademark having effect in France or in the European Union and would you like to file an opposition to an application for registration of a French trademark or an international trademark having effect in France?

Dreyfus & Associates assists you in effectively and rapidly defending your rights. In this regard, we help you introduce an opposition procedure before the INPI to prevent the registration of a trademark that infringes on your prior rights. We also assist you in initiating an out-of-court settlement procedure before the WIPO Arbitration and Mediation Centre, including the resolution of national and international domain name disputes.

Brief : DOMAIN NAMES: THE POTENTIAL CONFLICT OF DIFFERENT DOMAIN NAME SYSTEMS

Written by Dreyfus04/03/2022

A website can only be accessed if a system is able to link the URL entered by a user in his or her browser to the server of the website in question. This is called the Domain Name System (DNS). The DNS operates as an intermediary system through sending a request on the Internet in order to make the link between the address entered in the browser by the user and the actual access to the site. This is the reason why the DNS is often compared to a telephone directory as it allows to translate the names given by the user into names that are intelligible for machines.

When everything is set up properly to ensure that the DNS can play its role as an intermediary, it is sufficient to just have a device with Internet connection to access the site.

But currently some registrars offer domain names that don’t rely on the traditional DNS. Instead, they use technologies such as blockchain.

In order to be accessible, these domain names require the installation of specific tools such as particular browsers or plug-ins. These constitute additional costs for potential buyers who simply want to obtain a traditional domain name for their website.

These offers present two fundamental risks. The first issue relates to the communication of the Internet regulatory authority ICANN of November 24, 2021. It concerns the risk of confusion for consumers. In fact, it is not easy for the average consumer to make the distinction between these two types of offers whereas the purchase of these different domain names covers very different realities.

The second issue of this alternative resolution system consists of the risk of conflicts between domain names that would be registered through the traditional DNS system and those based on one of the new non-DNS systems.

These possible conflicts include name collisions. Hence, this phenomenon might intensify with the creation of parallel networks. This might occur when the system being used to translate names being entered by users into intelligible names for machines – in this case a non-DNS system – is sent to a DNS system, for which the address corresponds to the address of a different website.

In that case, the user would be redirected to the wrong domain name. These uncertainties could give rise to legal conflicts in the coming years if the new systems become more important.

Sources: ICANN Blog, Buyer Beware: Not All Names Are Created Equal, November 24, 2021, A. Durand
ICANN, Frequently Asked Questions: Name Collisions for IT Professionals

Brief : The AFNIC 2020 annual report

Written by Dreyfus22/02/2022

The digital transition of small and medium-sized enterprises was the AFNIC’s 2020 target – a year marked by the health and economic crisis. This target was reflected in the 2020 Annual Report of the French association. The report was released in June 2021.

In fact, there was a growth of 7% of <.fr> registrations with a total reach of 3,670,372 registered names at the end of 2020. The reason of this growth were the AFNIC’s efforts to make the registration and use of <.fr> more accessible, safe and proximate.

Given the increasing need for digital transformation, small and medium-sized enterprises had little choice but to develop and exploit Internet activities. The AFNIC organized a massive promotion of a secure and advantageous online presence via its Réussir-en.fr device. Thanks to this initiative, digital transitions took place more efficiently and more often.

In addition, the AFNIC signed a partnership with the DGCCRF (Directorate General of Competition, Consumer and Repression of Fraud). The aim of their partnership was to transmit the list of corresponding domain names to the DGCCRF on a daily basis, in order to block sites that supported or facilitated deceptive marketing practices. The general idea was to create a climate of trust.

Finally, the AFNIC Foundation took measures, in the context of the worldwide health crisis, to support local initiatives. The foundation aimed to reduce the distance with the digital environment and to restore the social connection, in particular through: purchasing computers for schoolchildren, purchasing sound equipment for EHPAD residents or setting up dematerialized accompaniments in order to find jobs online.

The AFNIC succeeded to achieve its 2020 goal to ensure the digital transition of small and medium-sized enterprises through making <.fr> safer and more accessible, through massive promotion and through supporting local initiatives to reduce the distance with the digital environment and to restore the social connection.

« .au direct »: the new Australian namespace that will launch on March 24, 2022

Written by Dreyfus08/02/2022

On the 24th of March 2022, a new name space will launch in Australia: “.au direct”.

It is a new name space that enables Australian citizens, permanent residents and organizations registered in Australia to register domain names directly before the .au.

Instead of registering and using domain names in the traditional namespaces such “com.au”, or “org.au”, “net.au”, “gov.au”, “edu.au” etc., Australian internet users will be able to opt for simpler and shorter domain names directly ending with “.au”.

In fact, the new name space enables two application possibilities. You can register a completely new “.au direct” name that isn’t registered in any existing .au namespace. The second option is to register the exact match of an already existing .au domain that you hold.

Where to register your “.au direct” domain name and at what price?

From March 24, 2022, you will be able to simply register new or matching “.au” domain names through participating auDA accredited registrars. Bearing in mind that the rule of supply and demand applies, the registration prices vary between different registrars. It is likely that a potentially popular name is more expensive than an ‘ordinary’ one. Nonetheless, the official administrator of Australia’s .au top level domain (the “auDA”) sets the wholesale price for all .au domain names. Whether you opt for a “com.au”, “net.au” or “.au direct”, the wholesale price will be the same.

What are the requirements?

First of all, you need to prove a verifiable Australian presence. Article 1.4 of the .au Domain Administration Rules provides an exhaustive list of 17 natural and legal persons that are considered to have an ‘Australian presence’. In short it concerns Australian citizens, permanent residents of Australia and organizations and companies registered in Australia. This Australian presence is thus the first requirement for any person or organization who wants to register a “.au direct” domain name.

The second requirement regards the name itself. Although there are no allocation rules for the “.au” namespace, in the sense that you can freely choose any name, this doesn’t mean that there are no restrictions.

First, the name that you would like to register needs to be available. Considering the new namespace will launch in March 2022, the availability is not a problem (yet). But the ‘first come, first served rule’ applies so the risk of unavailability will be something to bear in mind.

Second, the name cannot be mentioned in the « reserved list ». Under the Licensing Rules, you can’t apply for a registration of a word, acronym or abbreviation that is restricted or prohibited under an Australian law or a name or abbreviation of an Australian state or territory, including the word ‘Australia’.

Finally, you can’t register a name that is deemed to pose a risk to the security, stability and integrity of the “.au” and global Domain Name System.

The second requirement consists thus of a negative requirement; you cannot register an unavailable name, nor a so-called reserved name.

How to register “.au direct” domain names?

Provided that the Australian presence and availability requirements are met, you will be able to register any new “.au direct” name via any participating auDA accredited registrar starting from March 24.

Furthermore, provided that these same requirements are met, Australian internet users will also be able to register the exact match of an existing .au domain that you already hold. However, this allocation process is a bit more complex. The .au Domain Administration Rules provide for a “Priority Allocation Process”. This process foresees a six-month “Priory Application Period” – from March 24 until September 20, 2022 – for holders of a “.au” name in another namespace (such as “com.au”, “org.au” or “net.au”) who would like to apply for its exact “.au direct” match.

For example, if you own the domain name “dreyfus.com.au”, you can apply for the registration of “dreyfus.au” within this period via an accredited registrar. If it appears that the requirements are met, you will get a priority status and you will be put on “Priority Hold for the Priority Application Period”. Through this status, you have the first opportunity to register the name which prevents third parties from registering it.

In some cases, there may be more than one applicant for the same “.au direct” domain name. For instance, if you hold the domain name “dreyfus.com.au” and a third party holds the domain name “dreyfus.net.au”, and you both want to register the “dreyfus.au” direct domain name, the “.au direct” exact match will be allocated according to the Priority Allocation Process.

A distinction is made between two priority categories. The first Priority Category regards names that are created on or before the 4^th of February 2018. The second Priority Category regards Names created after the 4^th of February 2018.

Under Article 1.9 of the .au Domain Administration Rules, Category 1 applicants have priority over Category 2 applicants.

In case there are multiple Category 1 applications, the name is allocated on agreement/negotiation between the Category 1 applicants.

Finally, if there are only Category 2 applicants, the name is simply allocated to the applicant with the earliest creation date.

As a final note, registering a “.au direct” domain name does not entail any negative consequences. You can always attempt to register your “.au direct” exact match because it has no consequences on your existing .au domain names. So, if you already own the domain name “dreyfus.com.au” and you want to register “drefyus.au”, the domain name “dreyfus.com.au” will not be affected by this registration and will continue to exist.

On the 24th of March 2022, the new “.au direct” namespace will thus launch in Australia.

This new name space that enables anyone with a verified connection to Australia, such as citizens and permanent residents of Australia and organizations registered in Australia, to register “.au direct” domain names. Instead of registering and using names in the traditional namespaces, it will be possible to opt for simpler and shorter domain names that directly ends with “.au”.

The first possibility is to apply for a registration of a new .au direct names that are not already registered in the .au registry.

The second possibility consist of registering the exact match of existing .au domain names. The allocation of these domain names is regulated by the specific provisions of the “Priority Allocation Process”.

About this topic…

♦.au direct update – .auDA WEBSITE

♦Reverse domain name hijacking

The next round of application for gTLDs

Written by Dreyfus02/02/2022

In 2013, ICANN launched a vast operation to remedy domain name saturation and promote competition by setting up new gTLDs. These new extensions have helped unclog the market for more traditional extensions such as “.com”.

With the next application window expected in 2022, many companies are already showing a strong interest in “.BRAND”, such as Uber, which reportedly announced it at an ICANN virtual meeting (as reported by a GoDaddy registrar).
The personalised extension has many advantages, such as trust, since the company only is able to allow the registration of a domain name in its “. BRAND”. It also shows the willingness of companies to invest in order to enhance their trademarks.

On the other hand, other companies, due to lack of use or for other reasons, such as the restrictions that weigh on any registry, decide to terminate their “.BRAND”. In May, June and July 2021, four companies proceeded to this termination. This is what the recent update of the ICANN website shows:

• The “.SWIFTCOVER” for the company Swiftcover of Axa.
• The “.RMIT” for the company Royal Melbourne Institute of Technology
• The “.DABUR” for the company DABUR India Limited
• The “.LIXIL” for LIXIL Group Corporation

In 2012, many big companies applied for their “.BRAND”. It should be noted, however, that this application has a significant cost. In addition to the technical and consulting fees, the amount to apply was US$ 180,000 per application in 2012.

With the challenges raised by the security on the Internet and the obligations that weigh on companies, especially to protect the data of their customers, it is very likely, despite these costs, that the next round will be a real success. Many “.BRAND” are successfully used today, both from a marketing point of view and in terms of the security they provide to Internet users.

About this topic…

♦How to prepare for the next round of applications to the <.mark>?

♦ICANN Summit: the fight against DNS abuse, a GAC priority

ICANN Summit: the fight against DNS abuse, a GAC priority

Written by Dreyfus11/01/2022

The 71^st ICANN Summit gave its GAC (Governmental Advisory Committee) the competence to take stock of the essential elements of its missions, reflected in its report of June 21, 2021. In the “Issues of Importance to the GAC”, several elements were highlighted.

1. The next round of new gTLDs allow companies to have a TLD in their name

Göran Marby, CEO of ICANN, recalled that strengthening competition and improving the opportunities of Internet users to benefit from their own identifiers is part of ICANN’s duty. The ICANN presented the ODP (Operational Design Phase). This is a system that provides information on the operational issues of the project and aims to implement advice to make the procedure more effective.

But on the other side of the coin, there are also fraudsters amongst the beneficiaries. This is the case, for instance, regarding new gTLDs that were launched on the market almost ten years ago (like <.icu> or <.guru>).

2. Addressing the issue of domain name abuse

The issue of DNS abuse remains a flagship issue for the CAG, who describes the problem as a “priority”. DNS abuse is a term that refers to piracy cases where domain names are registered and used for fraudulent purposes such as phishing. The idea of the Framework on Domain Generating Algorithms (DGA) associated with Malware and Botnets was created. The objective of this framework is to place registries at the center of the fight against these abuses, and to encourage them to prevent the blocking of domain names from DGA’s. These DGA’s are algorithms used to generate a very large amount of domain names that can serve as meeting points between control servers and the command, allowing botnets to thrive more easily.

3. Reliability of Data

The GAC highlighted the importance of the correctness and completeness of domain name registration. Data reliability is an important aspect to ensure the prevention of – and fight against DNS abuses. It recalls the obligation of registers and registration offices to verify, validate and correct data. One of the objectives is to respond to the pitfalls of these data in a timely and efficient manner. The GAC specified that this should not only concern compliance with the GDPR but that it should include all information relating to domain names.

4. Accessibility of data

The ODP for Stage 2 of the EPDP has been put on the table. The purpose of this ODP is to inform interested parties on the question whether the SSAD (System for Standardized Access/Disclosure) works in favor of the interests of the ICANN community, especially in view of its impact in terms of costs. For the record, via the SSAD, it is possible to get information about requests that demand to lift the anonymity on certain domain names.

Phase 2A of the EPDP (Accelerated Policy Development Process) was discussed after the release of the EPDP Phase 2A Initial Report on the “Temporary Specification” (which is a new version of the Whois). This report provides guidance on how to publish registration information on companies that is not protected by the GDPR as well as email addresses for those who are anonymized.

5. Consumer protection

Finally, the recommendations of the CCT (Competition, Consumer Trust and Consumer Choice Review) were addressed. Among the recommendations that the GAC would like to see implemented was a pro bono assistance program as well as the recommendation concerning the identification of party chains that are responsible for registering domain names.

The ICANN’s report of June 21, 2021 highlighted several important elements. The fact that new gTLDs allow companies to have a TLD in their name engenders both benefices and dangers. It underlined the issue of domain name abuse and the importance of the correctness and completeness of domain name registration data, as well as the importance of accessibility of data and the need for consumer protection.

Dreyfus law firm

About this topic…

♦Attempted reverse domain name hijacking is an abuse of the administrative process

The reputation of the trademark is not enough to prove typosquatting

Written by Dreyfus23/12/2021

When you are the owner of a well-known trademark and you detect a domain name that is almost identical to it, and moreover on sale for a substantial amount of money, it is tempting to consider that it is a case of typosquatting. However, it is essential to pay attention to details.

The Valeo Group

The Valeo Group, which specializes in the design, production and distribution of automobile components, and its affiliate, Valeo Services, have experienced this, after filing a complaint against the <valoservices.com> domain name registered in 2018, which was offered for sale for EUR 2288.

The applicants were respectively registered in 1955 and 1987 and the name VALEO was adopted in 1980. Together they have 59 research centers and 191 production sites. They have received numerous awards for their products. They also own several word marks based on the “VALEO” sign, notably in France, the European Union, China and the United States, and also hold semi-figurative marks including the name “VALEO SERVICE”. Finally, they operate the domain names <valeo.com> and <valeoservice.com>.

The respondent, who answered the complaint, describes himself as an engineer based in the United States who has a large portfolio of generic domain names.

The respondent believes that there is no likelihood of confusion between the disputed name and the complainants’ trademarks. It explains that “valo” means “light” in Finnish and that a search on the sign “VALO” on Google or on trademark databases does not reveal any trademark including “VALEO”.

While these arguments, especially the second one, are interesting, they have no place in the analysis of the likelihood of confusion between a trademark and a domain name, which consists of a simple side-by-side analysis of the two names. Since the omission of the letter “E” can be perceived as a spelling mistake, the expert considers that there is indeed a similarity between the signs.

After this first step, the expert does not address the issue of the defendant’s rights or legitimate interest, but directly addresses the issue of bad faith. On this point, the applicants state that their trademarks are very well known and rely on decisions of the Chinese and European Trademark Union Offices as well as on old UDRP decisions.

The Respondent reiterates its arguments regarding the use of the Finnish language and its clearance searches. The respondent states that it has several domain names in a foreign language or containing the term “service”.

The panelist is skeptical about mixing Finnish and English in a domain name but considers the respondent’s research that shows that a query on “VALO” does not lead to the complainants and the fact that many companies around the world are named VALO or have adopted a name beginning with VALO. Therefore, the complaint is dismissed. However, the expert points out that it is always possible to turn to a more appropriate procedure. The Panel also rejects the Respondent’s request to characterize the complaint as a reverse domain name hijacking.

Thus, it is advisable to put oneself in the shoes of the reserving party to determine whether he could have had knowledge of the trademarks, in particular by taking into account his country of origin and the field of activity in which the trademark is renowned. In this respect, the expert notes that the car parts sector is relatively discreet.

In order to offer our clients a unique expertise, necessary for the exploitation of intangible assets, we keep you informed about intellectual property and digital economy issues through articles written by Dreyfus’ legal team.

About this topic …

♦ Why is the well knownness of an earlier trademark not enough to qualify bad faith ?

domain name

See also…

1.The metaverse, a new world for new ambitions?

2.How to design an adequate and optimal protection?

3.Virtual trademarks registered in various sectors

4.Conceptual considerations

See also…

SEE ALSO…

Detecting potential trademark infringements and securing your trademarks online

Online trademark audits

(Pre)litigation

SEE ALSO…

Where to register your “.au direct” domain name and at what price?

What are the requirements?

How to register “.au direct” domain names?

About this topic…

About this topic…

1. The next round of new gTLDs allow companies to have a TLD in their name

2. Addressing the issue of domain name abuse

3. Reliability of Data

4. Accessibility of data

5. Consumer protection

About this topic…

The Valeo Group

About this topic …

Sign up for our newsletter and stay informed about the latest developments in intellectual property and the digital economy!

News from Dreyfus Blog

Categories

Categories

Contact

Sign up for our newsletter and stay informed about the latest developments in intellectual property and the digital economy!