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Remedies for Cybersquatting: New gTLD Domain Names

In the discussions proceeding the World Intellectual Property Organization (WIPO) publishing The Management Of Internet Names And Addresses: Intellectual Property Issues (Final Report, April 30, 1999) that ultimately led to the Internet Corporation for Assigned Names and Numbers (ICANN) implementing the Uniform Domain Name Dispute Resolution Policy (UDRP) (1999) commentators considered three remedies to combat cybersquatting: suspending, cancelling, and transferring infringing domain names.

Of the three, suspension appears to have been considered separately. Final Report Paragraph 189 states:

A number of commentators were in favor of the possibility of an expedited application under the administrative procedure, whereby a complainant could obtain a suspension of a domain name registration on short notice pending a final decision on the merits.

However, the Final Report concluded that “the scope of the administrative procedure to cases of abusive registration makes this possibility unnecessary.” While suspension did not make its way into the UDRP ICANN’s nevertheless incorporated it in the Registrar Accreditation Agreement, and it is a standard fixture in domain name service agreements:

[RAA] 3.7.7.11. The Registered Name Holder shall agree that its registration of the Registered Name shall be subject to suspension, cancellation, or transfer pursuant to any ICANN adopted specification or policy, or pursuant to any registrar or registry procedure not inconsistent with an ICANN adopted specification or policy . . . for the resolution of disputes concerning the Registered Name.

The unused remedy of suspension came in handy when ICANN began considering an expedited mechanism for rights holders challenging registrations of domain names in new gTLD extensions. It found its place in the Uniform Rapid Suspension System (URS) (2013), an alternative to the UDRP but not an exclusive mechanism for alleged new gTLD infringements. The URS does not preclude rights holders (before or after the URS) from proceeding with the UDRP and its remedies (URS Procedure 8.5, 8.6, and 13).

In terms of numbers, however, rights holders still prefer the UDRP, although they occasionally start with the URS then go to the UDRP. Thus: Casale Media, Inc. v. PERFECT LLC et al., FA1608001689725 (Forum September 6, 2016) (<casalemedia.support> Complainant won  suspension, then commenced a UDRP for transfer of the domain name, Casale Media, Inc. v. (Name redacted) / PERFECT PRIVACY, LLC, FA1610001696719 (Forum November 10, 2016); and more recently, Boursorama S.A. v. GDPR Masked et al., FA1807001794828 (Forum July 18, 2018) and Boursorama S.A. v coupe, CAC 102082 (ADReu September 4, 2018) (<redirect-bourso.tech>, <redirect-bourso.space>, redirect-bourso.site>, and <redirect-bourso.online>). Though not done often, there is good reason for proceeding in this manner in that suspension (an injunction equivalent) is effective immediately upon filing the award and has the effect of taking down the website, while locking under the UDRP does not. Injunction first, then take the domain names out permanently by transfer.

In reviewing new gTLD disputes under the UDRP it is remarkable how few complaints are denied. (The percentage of denied is moderately higher under the URS because the evidentiary standard is higher, clear and convincing instead of preponderance of the evidence). Although not offered as a scientific conclusion, it appears that complaints against new gTLDs are granted at a higher rate than experienced for legacy gTLDs, more than 95% of the time. This is supported by the statistics prepared by DNDisputes.com (limited to WIPO cases) which show a declining percentage of denials (combining new and legacy gTLDs). The highs were reached before the new gTLDs were marketed (10.03% in 2006); lows in 2017 (5.26%) and 2018 (presently at 4.24%). When the numbers are not combined the more or less number over the years up to 2014 has been 90% granted, 10% denied.

One principle factor for the higher number of complaints granted concerns the choice of extension which for new gTLDs can be the determining factor in inferring intention. If an extension suggests complainant’s marketplace presence it will likely be found  infringing complainant’s statutory rights regardless of the strength or weakness of the mark.  While merely registering dictionary words and common expressions as domain names in the dot com space is likely insufficient to prove cybersquatting, the same strings with new gTLD extensions can be found infringing. For example, in Hike Private Limited v. Jared Hanstra, D2018-1588 (WIPO September 14, 2018) (<hike.app>) Respondent argued that Complainant had previously lost on the dictionary word “hike” in Hike Private Limited v. Perfect Privacy LLC / Zcapital, D2017-0902 (WIPO August 26, 2017) (<hike.com>) and that the earlier determination should be dispositive in denying the new complaint.

However, the Panel explained that the circumstances were different because

the Complainant [in the earlier case] was unable to show that the domain name at issue was registered with the Complainant’s mark in mind, given that the domain name consisted of the dictionary term ‘hike’ and there was no significance arising from the TLD ‘.com.’

In contrast, and a point to be underscored, “the use of the ‘.app’ TLD gives rise to an immediate suggestion of targeting which is fortified and confirmed, on the balance of probabilities, by the proximity of the registration of another domain name featuring the brand of another well-known and popular app.” Further, “this does not suggest an incidental use of a dictionary word or phrase and it does not surprise the Panel that the Respondent now offers to transfer that particular domain name to the rights owner concerned.”

Complainants lose in new gTLD cases for the same reasons that legacy complainants lose, namely there is insufficient evidence where trademarks are on the lower end of the classification scale, either dictionary words or common expressions. In Red.Com, LLC v. Whois Privacy Protection Service by MuuMuuDomain / Masayuki Unate, Pier 13 Pte. Ltd., D2018-1325 (WIPO July 30, 2018) Complainant argues that the extension “red” plus “hydrogen” infringes its predated mark RED when coupled with postdated mark HYDROGEN. Not so, explained the Panel:

In this case, while the Complainant’s trademark RED was first registered in 2009, its trademark HYDROGEN was not registered until 2017, some three years after the date of registration of the disputed domain name. Furthermore, according to the Complainant’s pleaded case, it introduced its Hydrogen product and filed the relevant trademark application in the course of 2017, there being no submission concerning any earlier use of that name by the Complainant.

For this reason,

the Respondent cannot have been aware of the Complainant’s use of the mark HYDROGEN at the date the disputed domain name was registered, as that use by the Complainant only commenced three years later. While the Complainant’s use of the mark RED did predate the registration of the disputed domain name, the use of that dictionary term alone, and only as the relevant gTLD, is insufficient in the view of the Panel to give rise to any inference that the Respondent registered the disputed domain name <hydrogen.red> in order to take unfair advantage of the Complainant’s RED trademark.

When respondents lose, they lose because there they have no counter evidence of good faith. For example, in Pet Plan Ltd. v. Helen Slottje, D2018-0943 (WIPO June 18, 2018) challenging the Complainant’s PETPLAN was registered (among other Classes) Class 45 for law related services. The Panel was

satisfied that the Respondent has registered the disputed domain name in the “.law” gTLD, being aware of the Complainant and of its trademark rights, including in respect of legal advice and legal assistance in International Class 45. Having nevertheless proceeded with the registration of the disputed domain name with this knowledge, it appears that this registration was made with an acceptance of the possibility that Internet users may be confused as to the affiliation of the disputed domain name to the Complainant and of the possibility that the disputed domain name might improperly exploit the popularity of the PETPLAN trademark to attract the attention of Internet users and to mislead them that they are dealing with the Complainant, without having the Complainant’s consent to do this. In the Panel’s view, such conduct does not appear to be legitimate and cannot be regarded as giving rise to rights and legitimate interests of the Respondent.

There is a similar result in block.one v. Negalize Interactive Things, FA1807001798280 (Forum August 21, 2018) for , a typosquatting SLD in which the extension is identical to one element of the mark.  No appearance by Respondent, but the Panel noted that “Complainant has provided evidence that Respondent offered to sell the <blck.one> domain name to Complainant.”

In the URS context complainants can lose against domain names composed of dictionary words (<hello.photo>)  and common phrases (<rocksolid.financial> or <discounttire.direct>) (unless the extension to the right of the dot clearly references or suggests complainant’s business and mark). In Federation Francaise De Tennis (FFT) v. Greg Harriott, FA1809001805323 (Forum September 30, 2018) challenging <frenchopen.bet> Respondent prevailed because Complainant’s failed to present itself correctly. Its trademark (at least in so far as represented in this proceeding) is registered for “toiletries and cosmetics,” not the Class in which its fame lies. The Examiner explained that while

the words French Open are widely recognized as referring to the major annual tennis event held in Paris and finds that Respondent probably had that event in mind when registering the domain name, since the domain name <frenchopen.bet> conveys the idea of betting on that tennis event. That idea does not involve any representation of any official or authorized association with Complainant, nor has Complainant so contended. Since Complainant’s evidence shows that its FRENCH OPEN trademark is not registered for tennis but for toiletries and cosmetics, the Examiner does not accept Complainant’s unsupported submission that this is a blocking registration. (Italics added for emphasis).

Should there be a next set (presenting itself correctly for a remedy under the UDRP) the result could well be different.

Complainants prevail when there is a combination of evidence of reputation and conclusive targeting of their mark even if the extension makes no reference to their market activities. Bloomberg Finance L.P. v.  Douglas Presutti, FA1809001808860 (Forum September 30, 3018) (<Bloomberg.bet>. Here, although the extension “bet” makes no reference to Complainant’s mark it is inconceivable either that the domain name could be used without infringing Complainant’s rights or that Respondent could plausibly deny knowledge of Complainant.  Further, even though Respondent is not himself  “running ads” on the resolving website it makes no difference because (drawing from UDRP jurisprudence):

it is well established that a domain name registrant is responsible for PPC ads placed on Registrar parking pages even though not placed there by the registrant and even though the registrant may not have profited directly. See WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition, paragraph 3.5 and the cases there cited.

In Weird Fish Limited v. Tom Wolsey et al., FA1809001804515 (Forum September 24, 2018), the extension clothing to the right of “weirdfish” for <weirdfish.clothing> where Complainant is in the business of selling clothes is sufficient to support cybersquatting. The Panel found Respondent’s explanations “odd” (that should probably be “weird”):

In his words, he has been a fisherman from an early age, and has virtually lived for fishing. He adds that since he fishes in all weathers he had to adapt his fishing gear to allow him to stay dry and be better prepared to stay on the river bank for up to 14 hours and wade in the river, and his adaptations to his fishing wear have been noticed by many other fishermen who asked him if he could make the same modifications for them which he has been doing for a small fee.

The suspension remedy is clearly a valuable tool. The question is whether its benefits should be extended to legacy gTLDs, although if it ever were the evidentiary burden and due process requirements would have to be strictly obeyed to maintain the balance of rights.

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (Legal Corner Press, 2015). A Second Edition of the treatise is scheduled for publication January 2019. Available on Amazon and Barnes & Noble.  If you purchased the First Edition, you can buy the Second Edition 50% off list price by contacting inquiries@legalcornerpress.com or gmlevine@researchtheworld.com. The discount will not be available from Amazon and Barnes & Noble.

 

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