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.
The 71st 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.
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.
We are pleased to present the “You, Me & IP” Podcast – Episode 4 in which Nathalie Dreyfus, founder of Dreyfus & Associates is the guest of Carlos Northon, founder and CEO of Northen’s Media PR & Marketing Ltd.
If you want to know more about intellectual property issues and discover a rich and experienced vision on the subject, you can also read the article Nathalie Dreyfus wrote for “The Global IP Matrix”.
Reverse domain name hijacking constitutes an abuse of procedure. On this topic, the WIPOissued on April 4, 2021 a decision reminding Complainants of their failings: it was their duty to proceed to relevant checks before initiating the complaint and to build their case properly. The examiner was all the more severe given that Complainants were represented by counsel.
The complaint in question was filed by three applicants.
First Complainant is an Indian company notably specializing in the manufacture and sale of sanitary products and kitchen appliances. First Complainant was originally known as Hindustan Twyfords, but later changed its name to HSILLtd. in 2009. Second Complainant, Somany Home Innovation Limited, was incorporated in 2017. It manufactures and sells, among other goods, air and water purifiers, water heaters, air coolers. Like Second Complainant, Third Complainant, Brilloca Ltd, results from the split of First Complainant.
Having detected the registration of the domain names <hsil.com> registered on November 16, 1999 and <shil.com> on December 9, 1999, Complainants filed a complaint with the WIPO Arbitration and Mediation Center to request the transfer of the domain names.
Respondent is a UK registered company, established on October 7, 1998, which provides web development services to help small businesses gain visibility on the Internet, initially focusing on the health club and leisure equipment market. In addition to the main site « health-club.net », Respondent has registered a number of short acronymic domain names.
First Complainant owns trademarks for the sign « HSIL », the first of which dates from 2004. Complainants further argue that Somany Home Innovation is widely known by the sign « SHIL », the acronym that corresponds to its corporate name.
First and foremost, the panelist notes that the applicants have not submitted any evidence showing the use of the sign « SHIL » to the point of making it a distinctive identifier for their benefit. Therefore, the latter considers that they are in default concerning the proof of likelihood of confusion between the <shil.com> domain name and an earlier trademark in which they potentially have rights. On the other hand, the likelihood of confusion was recognized for the name <hsil.com>.
Then, regarding the issue of legitimate interest and/or rights in the domain names, the panelist takes into account the fact that Respondent registered the disputed domain names in 1999, before the alleged filing and use of Complainants’ « HSIL » and « SHIL » marks. As opposed to Complainants, Respondent has provided evidence to support its claims that the names were used as acronyms for « Sports / Health in London » and « Health / Sports in London ».
Besides, the disputed domain names were registered in 1999, many years before the filing of the HSIL marks and the registration of domain names containing « HSIL ». In addition, the Complainants have no trademark rights for the sign « SHIL ».
Also, Respondent has demonstrated a use of the disputed domain names in connection to a bona fide offering of goods and services.
The complaint is therefore dismissed.
In addition, the panelist found that the complaint constituted reverse domain name hijacking, an attempt to obtain a domain name by artificially proving infringement.
Complainants, who are represented by counsel, should have anticipated the weakness of their argument and the fact that the acronyms « Hsil » and « Shil » could not refer exclusively to them, as alleged in the complaint without any evidence.
The panelist also notes that Complainants tried to make it look like trademarks were rejected in India because of the « well-known status and enormous goodwill » acquired by their earlier marks. This, despite the fact that the defendant has proven that third parties have been able to obtain registration of trademarks for the sign « SHIL » in India.
The panelist also targets Complainants’ representative and denounces an « unfamiliarity with the UDRP » and raises the fact that the latter has listed the registrar as respondent simply because it had allowed the registration of an available domain name, even though it is not in its power to decide whether or not to allow a registration.
Source: WIPO, Arbitration and Mediation Center, April 4, 2021, Case No. D2020-3416, HSIL Limited, Somany Home Innovation Limited v. SHIL Ltd, Brilloca Limited v. GOTW Hostmaster, Get on The Web Limited, India
Following the UDRP ‘s new gTLD program, new Rights Protection Review Mechanisms (RPM) have been implemented to protect trademark holders, such as the Uniform Rapid Suspension System (URS) procedure.
ICANN has now decided to address changes suggested by trademark holders and intellectual property experts regarding the UDRP. For instance, one of these suggestions is that a domain name should be considered abusive if it is registered OR if it is used in bad faith, instead of requiring that both these conditions are met. The idea is to lighten the burden of proof on the rights owner to take into account a more up-to-date reality. Another suggestion is to provide for an accelerated procedure in case of abusive conduct and to get a decision more rapidly if the defendant fails to respond to the complaint.
It has also been proposed to provide for a presumption of bad faith if the registrant has lost three UDRP complaints and to require any repeat offender to pay a response fee to defend the case. The central issue at this stage of the study is to understand the extent to which the UDRP principles should be changed in favour of trademark owners, while knowingt hat it may weaken the UDRP principles.
On November 22, 2016, at 4:05 p.m. sharp, the Vinci group is the victim of identity theft. Several media receive a false press release reporting a review of Vinci’s consolidated accounts for fiscal year 2015 and the first half of 2016 following alleged accounting embezzlement.
In 2019, the US news agency Bloomberg appealed a decision of the AMF’s sanctions commission. The hearing before the court of appeal will be held this Thursday. Bloomberg was sentenced to 5 million euros for relaying information from a false Vinci press release.
A fake press release from Bloomberg
The American news agency Bloomberg is accused of having disseminated, in 2016, false information about Vinci without having verified it.
On November 22, 2016, at 4:05 p.m. sharp, the Vinci group is the victim of identity theft. Several media receivea false press release reporting a review of Vinci’s consolidated accounts for fiscal year 2015 and the first half of 2016 following alleged accounting embezzlement.
The false statement also indicates that the chief financial officer was fired. Less than a minute later, between 4:06 p.m. and 4:07 p.m., Bloomberg picked up the information and disclosed it on his terminal.
This press release had even been signed with the name of the real person in charge of Vinci’s press relations, while referring to a false cell phone number.
In defense, the defendants point out before the commission that the tone, the absence of spelling errors, the careful layout, the exact references to certain directors of Vinci or to its auditors, the mention of the real spokesperson for Vinci as well as the plausibility of the foot of the press release, which contained a link to unsubscribe from the Vinci mailing list and alerted the recipient to the automated processing of data, mentioning the contact details of the real correspondent Cnil de Vinci , did not differentiate this press release from a real press release established by Vinci.
The domain name issue in the false press release
The only inaccuracies in the false press release: the domain name of the false Vinci site to which the press release referred and the false mobile phone number of the “media contact”.
The fraudulent press release was also received by AFP, which did not follow up after realizing that this document had been posted on a mirror website, very similar to the real site but with a separate address (vinci.group and not vinci.com).
How to protect your domain name?
Domain names represent an essential intangible asset for companies since they allow access to websites related to their activity. Now, protecting the domain names associated with the trademark or the business of the company has become almost as important to the company as the protection of its brands.
In addition, domain names are the preferred medium for cyber-attacks which calls for increased vigilance on the part of owners and Internet users.
Phishing, fake president fraud, identity theft, fake job offers, theft of personal or banking data, whaling… frauds are numerous and are constantly adapting to technological progress;
Fraud is facilitated by the very protective provisions of the GDPR, which prevent the direct identification of the domain name registrant; technical service providers tend to rely upon the provisions of the GDPR and the LCEN to justify their inaction and allow fraud to continue;
There is a great risk of damage to the company’s image and reputation. Such fraud also has a significant financial impact, given the risk of embezzlement and money laundering.
The AMF’s Guide to Periodic Disclosure for Listed Companies (dated June
To protect your domain name from cybersquatters or competitors, it is recommended to also register the domain name as a trademark in addition to the reservation of the domain name.
It is possible, before making a domain name reservation and trademark registration, to check its availability, to avoid conflicts between domain names, trademarks or corporate names.
Domain names are now an integral part of the international economic landscape. Like industrial property rights and traditional distinctive signs, they are instruments of competition and intangible assets of companies. It is of course essential to have it for anyone who wants to exist in a market.
But care must be taken not to come into conflict with one’s competitors by using, even in good faith, distinctive signs close to theirs. Conversely, it is also necessary to enforce its own distinctive signs by not allowing third parties to appropriate signs close to its own in order to offer the same or similar services.
How to mitigate the risks regarding domain names ?
– Proceed to an audit of the corporate trademark and the company’s flagship trademarks among domain names, in order to map the risks;
– Set up a 7/7 watch of the corporate trademark among domain names, and a 7/7 or at least weekly watch on the company’s trademarks dedicated to goods or services;
– Set up watches on social networks such as Facebook, Instagram, Twitter and LinkedIn;
– Proceed with the preventive registration of domain names in risky extensions (such as .COM, .CO, .CM, .GROUP);
– Take preventive action(s) against potentially dangerous domain names;
– Define procedures and set up a crisis management unit to quickly react to infringements in case of emergency;
– Draft or update the company’s domain name policy (registration procedures, compliance with legal obligations, best practices) to be shared internally and with the company’s service providers and suppliers.
Cyber threats are more numerous and more complex and it has also become increasingly difficult to take action against registrants of disputed domains. More than ever, monitoring is required with the implementation of risk mapping and a defense strategy.
Dreyfus advise you in setting up the appropriate strategy to limit the risks related to domain names and to integrate industrial property assets in your compliance plans.
A right or legitimate interest in a domain name may be demonstrated by its use in the context of a bona fide offer of goods or services. This assessment requires to take into account how the domain name has been used, but also the space-time framework: When was the domain name registered? By whom? In which country?
Founded in 2003, Ba & sh is a French company operating in the field of design, manufacturing and distribution of women’s ready-to-wear clothing and fashion accessories.
Having detected the registration of the domain names <bashshitever.com> registered in 2014 and <bashclothing.co> in 2020, Ba & sh filed a complaint with the WIPO Arbitration and Mediation Center in order to obtain the transfer of these domain names.
While the construction of the <bashshitever.com> domain name is somewhat intriguing, the fact that the <bashclothing.co> name contains the term “clothing” may have led Ba & sh to consider that its rights were being infringed.
In any event, since the domain names include the sign “BASH” except for the ampersand, the panellist acknowledges a likelihood of confusion.
Nevertheless, the panellist deems that Respondent has chosen these domain names independently of Complainant’s trademark and has used them in the context of a bona fide offer of its goods on the corresponding websites.
Indeed, Respondent is from Malaysia, where the company was founded in 2015, while Ba & sh has provided no evidence of actual use of its BA & SH mark in that territory. Khor Xin Yu, Respondent, explains that he co-founded “BASH CLOTHING” in 2013 when he was 18 years old and that the mark was also used in Singapore in 2017. Initially, the sign used was “Bash Shit Ever”, later changed in 2020 to “Bash Clothing” as part of a branding update.
Similarly, Respondent provided an explanation and documentation justifying the selection of the sign BASH because of the meaning of the dictionary term “bash”. Finally, Respondent used a logo that differs from that of Complainant.
Complainant has not shown that Respondent registered and used the disputed domain names in bad faith.
Indeed, when the first disputed domain name <bashshitever.com> was acquired by Respondent, Complainant had been operating in France and worldwide for about 11 years and had owned an international trademark for about 7 years, designating Malaysia. However, Complainant has not presented any evidence of actual use of its BA & SH trademark in Malaysia at the time of registration of the first disputed domain name.
In addition, a Google search for “bash” shows several results unrelated to Complainant or its trademark. Respondent has also provided a plausible explanation as to why he chose the term “bash”, an English dictionary term related to the idea of a party insofar as its initial target was female students.
Finally, although the parties operate in the same market segment (i.e. ready-to-wear and accessories), Respondent’s use of the disputed domain names does not show an intention to compete with Complainant and its trademark, given the different logos/layouts, the significantly lower prices at which the Respondent’s clothing is offered for sale, and the absence of any information on Respondent’s website that would lead users to believe that the website is operated by Complainant or any of its affiliated entities.
The complaint is, therefore, dismissed.
Ba & sh should have investigated Respondent’s motives before initiating a UDRP proceeding, including whether its trademark was known in Respondent’s country when the first domain name was registered. It should also have determined for how long Respondent had been using the “Bash” sign for fashion activities. An investigation could have revealed these elements. Respondent explains that he first marketed the Bash clothing on social networks. And, depending on the answers to these two questions, write a proper letter to the defendant
(OMPI, Centre d’arbitrage et de médiation, 23 février 2021, affaire n° D2020-3322, Netflix Inc. c. WhoisGuard, Inc. / Siddharth Sethi)
Avons-nous encore besoin d’introduire Netflix ? Cette plateforme proposant des services de streaming vidéo compte 195 millions de membres dans plus de 190 pays et semble être connue dans le monde entier. Pourtant, certaines personnes tentent de se soustraire à cette notoriété pour tenter de se construire une légitimité artificielle et justifier l’enregistrement d’un nom de domaine .
En effet, alors que la société Netflix détient de nombreux enregistrements dans le monde pour le signe « NETFLIX » en tant que marque , la société a détecté l’enregistrement du nom de domaine <netflix.store> . En conséquence, elle a déposé une plainte auprès du Centre d’arbitrage et de médiation de l’OMPI pour obtenir son transfert.
Le nom de domaine, enregistré le 3 septembre 2017, pointe vers une page qui présente une animation composée d’un effet d’éclatement de couleur et se termine par un écran de couleur vierge. Le titulaire soutient que le nom de domaine ne reproduit pas la marque NETFLIX mais est plutôt composé de deux termes , “net” et “flix”. Or, comme prévu, l’expert considère que la marque NETFLIX est reproduite à l’identique dans le nom de domaine. L’expert considère que si l’utilisation du nom de domaine n’est pas commerciale, son enregistrement ne serait pas non plus considéré comme légitime. En effet, le site mis en place vise à légitimer l’enregistrement afin de dissimuler l’intention de vendre le nom de domaine au Plaignant. Ni la reproduction de la marque NETFLIX dans le nom de domaine litigieux, ni l’extension <.store> n’ont de sens si le projet devait effectivement être non commercial.
En conséquence, il estime que l’intimé n’a aucun droit ou intérêt légitime sur le nom de domaine . Par ailleurs, l’expert constate que le Défendeur connaissait le Plaignant et son activité et prévoyait qu’en achetant le nom de domaine, il serait en mesure de le revendre au Plaignant avec un bénéfice significatif. Cette stratégie a été partiellement couronnée de succès, car Netflix a fait une offre que l’intimée a refusée, essayant d’obtenir une somme considérablement plus élevée.
Or, l’enregistrement d’un nom de domaine qui correspond à la marque d’un Plaignant avec l’intention de le vendre au Plaignant lui-même , établit la mauvaise foi. L’expert précise que le titulaire « [n’aurait pu] raisonnablement penser qu’un tiers serait en mesure d’utiliser commercialement le Nom de domaine litigieux ». Il convient également de noter que l’intimé a tenté de faire croire à la personne qui l’a contacté qu’il avait reçu d’autres offres plus élevées. En effet, le représentant de Netflix, qui n’avait pas indiqué qu’il agissait pour Netflix, ce qui était un secret de polichinelle, avait proposé la somme de 2 000 USD, que le déclarant jugeait trop faible.
L’expert commente ce comportement récurrent de certains cybersquatteurs : « Peu importe que le Défendeur n’ait pas proposé activement à la vente le Nom de domaine litigieux. Il n’est pas rare que des déclarants opportunistes de noms de domaine incluant une marque tierce attendent d’être approchés, réalisant qu’une offre active de vente du nom de domaine peut faciliter un procès UDRP à leur encontre ».
En conséquence, l’expert conclut que le nom de domaine litigieux a été enregistré et est utilisé de mauvaise foi et ordonne ainsi son transfert au Plaignant.
Sauf dans les cas où un nom de domaine reproduisant une marque notoire telle que NETFLIX est utilisé à des fins de critique sans usage commercial, ou pour un usage commercial minimal, il est quasiment inconcevable d’imaginer qu’un tel nom de domaine ait pu être enregistré de bonne foi . Netflix savait évidemment qu’elle gagnerait le procès, mais a visiblement choisi d’essayer de négocier un rachat à l’amiable pour un budget légèrement inférieur à celui d’une procédure UDRP, si l’on compte les 1 500 USD d’honoraires et les honoraires d’avocat. Cette approche, si elle réussissait, aurait permis d’économiser du temps et de l’argent, mais la simple offre de rachat a pour effet d’encourager le cybersquattage.
While one generally refers to the “three criteria” of the UDRP (a trademark similar to the domain name; the absence of rights or legitimate interests of the defendant in the disputed domain name; and the bad faith of the registrant), it should be kept in mind that bad faith in UDRP matters has two aspects: the first is bad faith registration and the second is bad faith usage. Therefore, proving only one of these elements is insufficient even though it may be considered “fair” that a name used in bad faith should be transferred to the applicant.
In the present case, Great American Hotel Group, Inc. complained that its former vice-president retained the domain name <greatamericanhg.com> and changed the password of the account used to manage this name with the registrar.
It all started in 2011 when the applicant decided to adopt the name Great American Hotel Group. Its president at the time asked Mr. Greene, then vice-president of the company, to reserve the domain name <greatamericanhg.group>.
The latter did so, but – apparently without notifying his superior – reserved the domain name in his name instead of that of the company. He did, however, record the company’s postal address, and pay with the company card. In 2012, he hired an anonymity service to hide his data.
Since its registration, the name had been used for the company and Mr. Greene had always treated the domain name as part of the company’s assets.
However, following disagreements, Mr. Greene was suspended from office in 2015 and dismissed in 2016. In 2017, the name was renewed by the company’s technical teams even though Mr. Greene was no longer present. However, the latter subsequently changed the password so that the name could no longer be renewed by the company. The applicant’s counsel proceeded to send Mr. Greene a letter of formal notice, which remained unanswered, leading to the filing of a UDRP complaint.
The panellist acknowledged that the applicant had common law trademark rights through the use of the sign “Great American” and that the registrant did not have any legitimate rights or interest in the name as it was created for the applicant company.
He also acknowledged that the domain name was used by Mr. Greene in bad faith.
Nevertheless, the panellist was more sceptical regarding the issue of bad faith registration. Indeed, the name had been reserved by Mr. Greene at the request of the president of the applicant company, which, in principle, had, in fact, been a registration in good faith.
In order for registration by an employee to qualify as having been done in bad faith, the panellist specified that the employee must have, from the beginning, had “an intention to cause harm”. Therefore, the evaluation must be factual and done on a case-by-case basis.
In this case, Mr. Greene had registered the domain name in his own name. The panellist found that “this may be subject to questioning, and the fact that he did not mention the company does not constitute a good domain name management practice”, however, the president and the company seemed to be equally as uninterested in formalizing the reservation of the name.
For four years, until he was suspended from his functions, the registrant had always displayed conduct that demonstrated that he understood that the name belonged to the company. Thus, there is no reason to suppose that by reserving the name four years earlier, he had intended to compete with the applicant or to benefit from some type of tactical advantage against him.
Consequently, the plaintiff’s complaint was dismissed as the registration in bad faith had not been established. Nevertheless, the panellist specified that the applicant could turn to other avenues to try to obtain relief.
The significance of this decision, in addition to highlighting the dual condition of bad faith, is that it reiterates the need to set up an internal naming charter to avoid any dispersion of assets, both in terms of trademarks and domain names.
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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”.
While one generally refers to the “three criteria” of the UDRP (a trademark similar to the domain name; the absence of rights or legitimate interests of the defendant in the disputed domain name; and the bad faith of the registrant), it should be kept in mind that bad faith in UDRP matters has two aspects: the first is bad faith registration and the second is bad faith usage. Therefore, proving only one of these elements is insufficient even though it may be considered “fair” that a name used in bad faith should be transferred to the applicant.