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Domain name industry news

.SWISS relaxes slightly

The Federal Office of Communications (OFCOM), the Registry of the new generic Top Level Domain (gTLD) .SWISS, has recently updated the strict eligibility requirements for the gTLD, without however lifting all restrictions.

Up until now, the .SWISS new gTLD, which was launched in 2015 and represents the community of Switzerland along with the country code Top Level Domain (ccTLD) .CH, was reserved for public and private organisations based in Switzerland.  With a view to making the new gTLD available to the entire Swiss community, the .SWISS Registry has decided to extend the eligibility requirements.  Since 24 April 2024, private individuals who are either Swiss nationals or live in Switzerland are now able to register .SWISS domain names.

However, some restrictions remain: just like public and private organisations have always had to prove an objective relationship between them and their requested domain names (for example a company name or a trade mark), individuals can only register domain names which have a link to them, that is to say which correspond to their own name (surname, first name, married name…), a name received in a religious order, the artist's name under which they are known, or a name attached to a distinctive sign (such as a trade mark) in which they have rights.

In addition, surnames that are generic terms in French, Italian and German (such as “Barbieri” (“barbers” in Italian), “Marchand” (“merchant” in French) or “Metzger” (“butcher” in German)) cannot be registered as .SWISS domain names by individuals.  In order to use such surnames, individuals need to add another element to the domain names, such as a first name.

As for Swiss nationals living abroad, while they are allowed to register .SWISS domain names, they are not able to use them for commercial purposes.  They may only use them for private, associative or charitable purposes.

Before the rules changed, over 26,000 .SWISS domain names had been registered, compared to 2.5 million for .CH, which unlike .SWISS has always been open to all entities without any restrictions.

The full registration requirements for .SWISS are available on the Registry’s website here.

For more information on .SWISS or any other TLDs, please contact David Taylor or Jane Seager. 

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EURid comes of age

EURid, the Registry responsible for running the .EU country code Top Level Domain (ccTLD), recently celebrated its 18th anniversary.

EURid was incorporated under Belgian law in April 2003 and, shortly thereafter, it was appointed by the European Commission to run the .EU domain name Registry following a tender process.  The Sunrise Period for .EU opened in December 2005 when EURid started accepting .EU domain name applications from prior rights holders.  The Sunrise Period was followed by the Landrush Period on 7 April 2006 when .EU registrations were opened on a first come, first served basis.  Some one million registrations were recorded on the first day of the Landrush launch.

EURid marked the anniversary by releasing a list of “eighteen memorable facts and figures about the European domain”.  Number 18 states that: “with its adherence to EU law and relevant standards, .eu is recognized as a trusted digital identifier, signalling credibility and reliability to users worldwide”.  

Over the past 18 years there have been some notable developments and changes in the .EU domain name space, and we have highlighted a number of these below:

• December 2009: EURid announced that it was supporting all official EU language scripts by allowing Internationalised Domain Names (IDNs).  This meant that residents of the European Union could register a .EU domain name that used characters from the whole Latin, Cyrillic or Greek alphabets; for example the Polish Å‚, the Spanish ñ, the Danish ø, the French é, the Bulgarian л and the Greek θ.
• June 2010: .EU enabled Domain Name System Security Extensions (DNSSEC).  DNSSEC was designed and implemented as a response to the inherent security vulnerabilities in the way that the Domain Name System operates.  Due to these vulnerabilities, it is possible to divert internet users away from their intended website destinations and to redirect them to third-party websites without their knowledge.  This can result in the dissemination of computer viruses, malware and even theft of sensitive financial and personal data.
• January 2014: .EU eligibility was extended to the European Economic Area (EEA) countries, Iceland, Norway and Liechtenstein.
• May and June 2016: EURid announced that Cyrillic .EU domain names would be deleted following a three-year phase-out period ending on 31 May 2019.  This new rule was implemented to prohibit the registration of domain names that mix Cyrillic and Latin scripts, in order to avoid confusion about domain names that look similar.  At the same time, EURid announced that, on 1 June 2016, it would launch domain name registrations under .ЕЮ, the Cyrillic version of .EU.  This enabled registrants to apply for IDNs in Cyrillic script taking the form of пример.ею.
• February 2020: pursuant to the departure of the United Kingdom from the European Union on 1 February 2020, the Withdrawal Agreement provided for a transition period up to 31 December 2020 that allowed organisations established in the UK, and UK residents and citizens to continue to hold and register .EU domain names.  After the end of the transition period, any organisations established in the UK but not in the EU, UK citizens who were not resident in an EU Member State, and UK residents who were not EU citizens, were no longer eligible to hold .EU domain names.

.EU consistently ranks in the top 10 among ccTLDs and commands a significant presence in the global domain name space.  At the time of writing there are approximately 3.7 million registered domain names under .EU.  It will be interesting to see what other developments, changes and milestones under .EU will occur in the future.

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Han Solo

The Internet Corporation for Assigned Names and Numbers (ICANN) recently announced that it was planning on loosening the restrictions for certain new generic Top Level Domains (gTLDs) during the 2026 application round.

This loosening of restrictions will only apply to new gTLDs written in the Han script (used in the Chinese, Japanese and Korean languages) and will allow for single-character new gTLDs in this specific script.  The general rule remains the same when applying for new gTLDs in the Latin script strings, where the requirement is for a minimum of three characters (two-letter strings are reserved for ccTLDs).  Internationalized Domain Names (IDNs) in other non-Han scripts have a minimum of two characters.

This exemption is being introduced due to the Han script, also known as Han characters or Hanzi (in Chinese), Kanji (in Japanese) and Hanja (in Korean), being an ideographic script where a single character can have a meaning that other alphabetic scripts would require an entire string to express.  For example “domain” in the Chinese simplified script is 域

The New gTLD Program was launched in 2012 and resulted in the addition of more than 1,200 new gTLDs.  These new gTLDs included TLDs in various languages and scripts but did not feature the Han exemption, and no IDN gTLDs currently in the DNS have fewer than two characters.

The draft rules governing IDNs are set to be included in the next batch of the Applicant Guidebook (AGB) components that ICANN releases for public comment.  The comment period on the first batch, which covered topics such as geographic names, blocked strings, Universal Acceptance, conflicts of interest and freedom of expression, ended on 19 March 2024 with no real objections.

ICANN has stated that the next round of new gTLDs will “give businesses, communities, and others the opportunity to apply for new top-level domains tailored to their community, culture, language, business, and customers” and that it will also offer “opportunities to create a more multilingual and inclusive Internet for the billions of people who speak and write in different languages and scripts and are yet to come online.”

Should you be interested in registering IDNs, or the next round of new gTLDs, please contact David Taylor or Jane Seager.

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Domain name recuperation news

In fact, not all domain name disputes are covered by the UDRP

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel refused to transfer the disputed Domain Name simgun.com, finding that the Complainant had failed to prove that the Domain Name had been registered in bad faith, and underlining that the UDRP cannot be used to resolve broader legal, corporate, or contractual disputes, particularly those that are not straightforward.

The Complainant was FACT Systems GmbH, an Austrian company.  It was the owner of the European Union trade mark in the word SIMGUN for goods and services in classes No. 9, 25, 28, 35, 41, and 42, registered in December 2009.

The Respondent was an individual based in Switzerland.  The Domain Name was first registered in July 2007.  At the time that the Complaint was filed it resolved to a website where a company known as Simgun GmbH presented the same products as the Complainant.  The Respondent was a minority shareholder of Simgun GmbH.

Simgun GmbH went bankrupt in 2023 and closed its business several months before the Complaint was filed.  It was licensed to use the SIMGUN trade mark pursuant to a December 2017 agreement with the Complainant's predecessor.  This agreement was terminated in December 2022. 

The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name. 

To be successful under the UDRP, a Complainant must satisfy the requirements of paragraph 4(a) of the UDRP, namely that:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

The Panel held that the first element of paragraph 4(a) of the UDRP had been established, as the entirety of the trade mark was reproduced within the Domain Name and the Domain Name was identical to the trade mark.

With regard to the second element of paragraph 4(a) of the UDRP, the Panel declined to address the issue of rights and legitimate interests because it found that the Complainant had not established the third element in relation to bad faith registration and use.

With regard to the third element, the Complainant contended that, just before Christmas 2019, the minority shareholder (i.e., the Respondent) had transferred the Domain Name to himself without the consent and knowledge of the majority shareholder.  The Complainant considered that, as such, the Respondent (i) had prevented the Complainant from reflecting the SIMGUN trade mark in the Domain Name, (ii) disrupted the business of the Complainant, and/or (iii) had gained control over the Domain Name without having any rights.

The Complainant added that the bankrupt Simgun GmbH had no control over the Domain Name and the associated email addresses.  However, enquiries from customers were still sent to the associated email addresses and therefore to the Respondent, who could mislead such customers.  The Complainant considered that the Respondent and/or its representative were either preparing their access to the market with competing products or they simply wanted to disrupt the Complainant's business. 

The Respondent argued that the Domain Name was transferred in agreement with the majority shareholder and that the transfer code required for such transfer was in the possession of the majority shareholder.  The Respondent further indicated that he had filed a criminal complaint against the Complainant for fraud and that civil court proceedings were underway against the majority shareholder.

The Panel considered that, based on the unrebutted facts before it, the Domain Name must have been transferred to and registered in the name of the Respondent just before Christmas 2019, which was clearly long before the termination of licence agreement and the bankruptcy of Simgun GmbH.

The Panel indicated that it was central to the case to determine whether the transfer of the Domain Name was legitimate in order to establish bad faith registration by the Respondent, and that the burden of proof was on the Complainant.  However, the Panel noted that the Complainant had not provided any further evidence that the transfer of the Domain Name to the Respondent was illegitimate.  Nor had the Complainant provided any evidence that the Respondent was misleading the public through the use of email addresses associated with the Domain Name.

The Panel concluded that, given the unsubstantiated contentions by the Complainant and the also unsubstantiated rebuttal by the Respondent, on balance the Complainant had failed to establish registration in bad faith and so transfer was denied.

The Panel underlined that the UDRP is limited in scope to domain name cybersquatting cases and is not intended to resolve broader legal, corporate, or contractual disputes, particularly those that are not straightforward.  Resolution of the issue of whether the transfer of the Domain Name to the Respondent was legitimate would require a thorough analysis of the rights and obligations of the shareholders in Simgun GmbH and what actually happened in 2019. In the Panel’s opinion, undertaking such an analysis would be outside the scope of the UDRP and would be more appropriately addressed by a court of competent jurisdiction.

Comment

It can be seen from the decision that the UDRP is not intended to resolve any and all disputes relating to domain names, such as the legality of disputed transfers, only disputes relating to bad faith registration and use, otherwise known as cybersquatting.

The decision is available here.

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Don’t forget to renew your domain names

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied a complaint in relation to the disputed domain name nestra.com.  The Complainant, a Hungarian real estate company, failed to renew the domain name (used for its main website) and the Respondent, a US domain investor, subsequently bought it at auction and listed it for sale.  However, given the surrounding circumstances, the Panel found no evidence of bad faith and the complaint was denied.

To be successful under the UDRP, a Complainant must satisfy the requirements of paragraph 4(a) of the UDRP, namely that:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

The Complainant argued that it had registered NESTRA as a trade mark in Hungary on 25 April 2019 and used the name in its business.  Furthermore, its holding company owned the domain name nestra.fr and the web page at www.nestra.fr was accessible in Hungarian, French and English.  The Complainant argued that the disputed domain name was identical to its trade mark and that the Respondent lacked rights or legitimate interests.  It contended that the Respondent's subsequent offer to sell the domain name indicated bad faith, coupled with the Respondent's extensive portfolio of thousands of domain names.  The Complainant asserted that it had established all three of the elements required under the UDRP for a transfer of the disputed domain name. 

In response, the Respondent argued that its acquisition of the domain name was part of a legitimate business practice of investing in domain names.  It emphasised the descriptive nature of the term "nestra" in various languages and provided evidence of similar domain name registrations to support its position.  Indeed, the Respondent mentioned the fact that “nestra” was used by various businesses all over the world and had been registered as a trade mark in Spain since 2008, Botswana since 1992 and India since 2006.  The Respondent noted that these registrations had not prevented the Complainant from purchasing the domain name in 2018.   Moreover, the Respondent stressed that it specialised in buying various types of domain names, excluding those related to well-known brands. The Respondent claimed that it was unaware of the Complainant until it received the complaint.   Furthermore, it denied targeting the Complainant, stating that its intention was to sell the domain name at market value, which was not indicative of bad faith.

As regards the first limb of paragraph 4(a) of the UDRP, the Panel found that the Domain name was indeed identical to the Complainant's trade mark.

Concerning the second limb, the Panel found that the Respondent lacked any affiliation with the Complainant and had not used the disputed domain name except to offer it for sale. The Panel noted that the Respondent's business model of domain name investment could potentially constitute a legitimate interest, but that such purchases could be done in good or bad faith.  Given this and its further findings, the Panel moved directly to examine the question of bad faith under the third limb.  

With regard to bad faith, the Panel considered the descriptive nature of the term "nestra" and its potential significance in various languages, such as “window” in Italian and “nest” in Hungarian.  As for the Respondent’s prior knowledge, the Panel noted that the Respondent stated (under penalty of perjury) that it had never heard of the Complainant when it bought the disputed domain name.  In this regard the Complainant’s trade mark was not well-known outside Hungary and not known or readily accessible in the Respondent’s location.  In the Panel’s view, the Complainant’s trade mark was not inherently distinctive and may plausibly have been evaluated by the Respondent as a valuable domain name for that reason.

The Panel noted that domain name traders buying bulk or automated registrations may have an extra obligation to avoid the registration of abusive domain names, such as checking online trade mark databases to avoid trade mark abuse.  However, in this case the Respondent asserted that it had made such good faith efforts.  Based on the case file, the Panel did not believe that the Respondent had been wilfully blind.

The Panel noted that the practice of registering domain names for subsequent resale would not by itself support a claim that the Respondent had registered the disputed domain name in bad faith.  However, in this case the disputed domain name was descriptive in different languages. In addition, it was not likely that the Respondent knew of the Complainant’s rights, and the Complainant had not documented a pattern of abusive registrations by the Respondent.  The Panel noted that the list of the Respondent’s registrations appeared to contain mostly descriptive domain names.

Importantly, there was no evidence indicating a deliberate attempt by the Respondent to target the Complainant or engage in abusive use of the disputed domain name.  Despite the Complainant's assertions regarding the Respondent's extensive domain name portfolio and the pricing of the domain name, the Panel did not find sufficient evidence to support a finding of bad faith registration and use.  Thus, the Panel concluded that the Complainant had failed to establish bad faith on the part of the Respondent under the third limb of the UDRP and the case was denied.

Comment

Once again the decision underlines that targeting is key to a finding of bad faith.  With no concrete evidence of targeting, Panels will look at other factors, such as the distinctiveness of the domain name and the geographical distance between the parties, to assess how plausible a respondent’s claims are.  A respondent’s good faith efforts to avoid potential issues, such as searching other extensions and databases, are also relevant to a Panel’s assessment. 

In conclusion, the UDRP may be of no assistance to brand owners whose domain names are inadvertently allowed to lapse, especially if their trade marks are not immediately globally recognisable.  It is therefore crucial to ensure that portfolios are securely managed and that domain names are always renewed in good time.  Having to repurchase a business critical domain name can make failure to renew it a very costly mistake.

The decision is available here.

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MakeMyDenial

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (the UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of the Domain Name at issue, finding that the case raised a more complicated trade mark law question requiring further consideration that was outside of the scope of the UDRP.

The Complainant was MakeMyTrip (India) Private Limited, an Indian travel company.  The Complainant held several trade mark registrations for MAKEMYTRIP, including an Indian trade mark registered in 2011, and for MAKEMY.

The disputed Domain Name was makemypaisa.com.  There was a dispute surrounding its date of registration, with the Complainant asserting that it was registered in November 2017 and the Respondent claiming that it was registered in February 2008.  The Respondent was an individual also based in India, who had filed a trade mark application for MAKEMYPAISA.  At the time of the filing of the Complaint, the Domain Name resolved to a website providing financial services.

The Complainant initiated proceedings under the UDRP for a transfer of ownership of the Domain Name.  The Respondent submitted a Response asserting rights and legitimate interests in the Domain Name in connection with the services provided and denying bad faith registration and use.

To be successful under the UDRP, a Complainant must satisfy the requirements of paragraph 4(a) of the UDRP, namely that:

(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;

(ii) the respondent has no rights or legitimate interests in the disputed domain name; and

(iii) the disputed domain name was registered and is being used in bad faith.

On the first requirement, the Panel agreed that the Domain Name was similar to the Complainant's MAKEMY trade mark, reproduced in its entirety, which satisfied the requirements of paragraph 4(a)(i) of the UDRP.

Regarding rights and legitimate interests, the Panel found that the Respondent had provided proof of demonstrable preparations to use the Domain Name in connection with a bona fide offering of services, as he was using it to resolve to a website offering financial services.  As the requirements of paragraph 4(a) are cumulative, this would have been enough to deny the case, but for the sake of completeness the Panel went on to examine the third limb and bad faith.

In this regard, the Panel first acknowledged that there was competing evidence in relation to the registration date of the Domain Name.  The Panel also underlined that although the Complainant had registered trade marks for MAKEMYTRIP from 2011, its trade mark for MAKEMY – which was the only trade mark entirely included in the Domain Name – was first registered in 2018, after the registration date of the Domain Name confirmed by the registrar.  Further, the Panel found that the Complainant had failed to establish that its MAKEMY trade mark was used or had any reputation. 

Finally, the Panel held that there was no evidence provided as to when the Complainant started its activity as a financial services provider, nor any evidence as to whether the trade marks MAKEMY and MAKEMYTRIP were used in relation to such services.  In this regard, the Panel underlined that the Respondent did not deny knowledge of the Complainant itself, only knowledge of its financial services activity, and that it was not inconceivable that the Domain Name had been registered and used to target the Complainant.  However, the Panel found that such an issue would be better addressed under trade mark law and would require a more in-depth enquiry, unavailable under the UDRP.  Transfer was therefore denied.

Comment

This decision underlines that is generally not enough to simply show that a respondent had heard of a complainant and its trade mark.  Instead it is usually necessary to demonstrate that a respondent’s real aim was to exploit and profit from the goodwill attached to such trade mark.  In cases where a domain name evokes the spirit of a trade mark via use of descriptive terms, this is a difficult assessment to make under the UDRP, which is essentially intended for cybersquatting cases and not suited to an in depth examination of a party’s motives by cross examination and witness statements.  Thus in more complex cases that involve potential trade mark infringement, Panels will sometimes decline to make a finding on the basis that the issues would be better resolved by a court of competent jurisdiction.

The decision is available here.

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Authored by the Anchovy News team.

Anchovy News editorial team:

• Laëtitia Arrault
• Lanlan Bian
• Gabrielle Creppy
• Sean Kelly         
• Hortense Le Dosseur
• Ying Lou
• Cindy Mikul
• Eliza Parr
• Thomas Raudkivi
• Maria Rozylo
• Jane Seager
• Aissatou Sylla   
• David Taylor
• Tony Vitali

Anchovy® - Global Domain Name and Internet Governance

Hogan Lovells offers a unique, comprehensive and centralised Paris-based online brand protection service called Anchovy® for global domain name strategy, portfolio management and global enforcement.  We are the only law firm to be an ICANN-accredited registrar and we are accredited with a number of country-specific Registries worldwide. 

We also specialise in all aspects of ICANN’s new generic Top Level Domain (gTLD) process and we are an agent for the Trademark Clearinghouse.  As the global Domain Name System undergoes an unprecedented expansion, brand owners must revise their online protection strategies and we are ideally placed to guide them.

We are also frequently brought in to advise on cybersecurity, data protection and on a whole range of technology-related issues.

For more information on our services, please contact David Taylor or Jane Seager.