Newsletter sections:

• Domain name industry news
• Domain name recuperation news

For earlier Anchovy News publications, please visit our Domain Names practice page. Learn more about Anchovy® - Global Domain Name and Internet Governance here.

Domain name industry news

IDN statistics released

As regular Anchovy News readers will know, the IDN World Report, a research project of EURid (the Registry for .EU), UNESCO and other partners, releases an annual report that covers statistics and trends within the global Internationalised Domain Name (IDN) market, with a focus on country code Top Level Domains (ccTLDs).  The 2023 Report has shown slightly negative growth for IDN registrations across the ccTLDs and only modest growth across the gTLDs over the previous year.

IDNs are domain names that contain at least one non-ASCII character – for example, a character with diacritics like é, ü, ñ, or a Chinese character like 飛.  Registering IDNs is possible in most generic Top Level Domains (gTLDs) and in many ccTLDs such as Brazil (.BR), China (.CN), France (.FR), Germany (.DE) or Spain (.ES).

The IDN World Report for 2023 states that 84% of current ccTLDs support IDN registrations (this is up from 79% on the previous year) and that there are an estimated 2.9 million IDN registrations under the various ccTLDs.  However, over the 12 months to January 2023, the median growth of IDN registrations across a sample of 40 ccTLDs was -0.1%, down from the previous year’s growth rate of 2.5%

gTLDs fared slightly better.  With an estimated 1.4 million IDN registrations in total across the gTLDs, the median growth rate over the 12 months to January 2023 was 1.91%.

The statistics in the Report once again showed that IDNs represented a less than 1% share of the estimated 360 million domain names registered worldwide.  This, the Report stated, was not necessarily a failing of IDN registrations, but rather a reflection of how the Internet had developed “from a Western origin predominantly in Latin script.”

On the bright side, the Report stated that awareness around IDNs had improved, as evidenced by Registries giving an average score of 2.5 out of 5 (up from 2.2 in 2022) in response to a survey on how they perceive end-user awareness of IDNs.  They also rated registrar support for IDNs at an average of 4 out of 5 (up from 3.1 in 2022).

The authors of the Report concluded that, while the figures had improved over those from 2022, they “still need an improvement if IDNs are to strengthen their standing and accessibility for internet users as well as their changes for improved adoption in software applications (the concept known as universal acceptance).”

Should you require any assistance in registering IDNs, please contact David Taylor or Jane Seager. 

Back to the top.

Domain Name Industry Brief for Q3 2023

DNIB.com (a data, news and information website sponsored by Verisign) recently published the Domain Name Industry Brief Quarterly Report for the third quarter of 2023, which highlighted a continued rise in domain name registrations across all Top Level Domains (TLDs). 

The total number of reported domain names across all TLDs at the end of the third quarter was 359.3 million, which represented a 2.7 million increase (or 0.8%) compared to the second quarter of 2023.  The year over year figures showed an increase of 8.5 million, or 2.4%.

The top ten largest TLDs as of 30 September 2023 were as follows:

It is worth noting that with the exception of the .AU ccTLD replacing .XYZ, the top ten TLDs have remained the same year over year.

Taking the two most popular generic Top Level Domains (gTLDs) .COM and .NET, they had a combined total of about 174 million reported domain names at the end of Q3 2023, which is a 0.3% decrease compared to Q2 2023.  The combined year over year figures for .COM and .NET followed the same trend with a decrease of 0.2 million domain names, or 0.1%.  

In terms of new domain name registrations, the combined total for .COM and .NET was 9.9 million at the end of Q3 2023, which was the same as for the same period in 2022.  The total number of reported .COM domain names was 160.8 million, which represents about 45% of all TLDs. 

As for country code Top Level Domains (ccTLDs), they recorded 138.1 million domain names at the end of Q3 2023, representing a 0.8% increase compared to Q2 2023.  Year over year figures showed a 5.4 million increase, or 4.1%.

Finally, the total number of reported domain names under the new gTLDs was 30.2 million at the end of Q3 2023, which is an increase of 2.1 million, or 7.5%, compared to Q2 2023.  The year over year figures saw an increase of 2.9 million or 10.6%.  New gTLDs account for 8.4% of all TLDs.

For more information or assistance in registering domain names in any jurisdiction, please contact David Taylor or Jane Seager.

Back to the top.

Nominet selected as the new Registry for .GOV.UK

Nominet, the Registry responsible for running the .UK country code Top Level Domain (ccTLD), has been chosen to take over the management of .GOV.UK domain names further to a competitive tender.  Until then, .GOV.UK was run by Jisc, the not-for-profit organisation which also manages the .AC.UK extension.

This seems like a natural progression for Nominet, which has been running the .UK domain name space since 1996 and already played a technical part for .GOV.UK as it was running its DNS.  According to its announcement, securing this new contract will enable Nominet to have a more visible and prominent role and to support .GOV.UK registrars as well as the Central Digital and Data Office (CDDO), part of the UK government’s Cabinet Office, “with their plans to modernise .gov.uk”. 

Becoming the new Registry is “strategically important for both Nominet and the UK government” and will enable them to “provide security coverage across critical domains”.  Eleanor Bradley, Managing Director of Registry and Social Impact at Nominet, has said: “We’re incredibly proud of this new partnership – supporting these critical domains aligns closely with our mission to be a world-class registry and public benefit company.”

It should be noted that the registration of .GOV.UK domain names is strictly controlled and restricted to central government departments or agencies, non-departmental bodies, councils etc.

Nominet will start working with the UK government in order to take over the operational responsibilities of .GOV.UK in early 2024.

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

Back to the top.

Domain name recuperation news

Bad faith difficult to prove for short acronyms

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 Domain Name iba.com, finding that the Complainant had failed to prove that it had been registered and used in bad faith.

The Complainant was IBA SA., a Belgian company incorporated in 1986 as a spin-off from a Belgian university.  It was a substantial organisation operating on an international level.  The acronym IBA in the Complainant's name stood for "ion beam application".  The Complainant was a manufacturer of specialised medical equipment and was listed on the Brussels stock market in 1998.  It owned a number of trade mark registrations in IBA. 

The Respondent was an individual based in the United States who registered the Domain Name in April 1995.

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.

Under the first element of paragraph 4(a) of the UDRP, the Complainant argued that the Domain Name was identical to its trade mark IBA and confusingly similar to its other trade marks.  The Respondent accepted that the Domain Name was identical and the Panel agreed.  The Panel also noted that the fact that the Domain Name registration preceded the Complainant’s trade mark registrations had no incidence on the first element, as long as the trade mark existed at the time of filing of the Complaint.

Under the second element of paragraph 4(a) of the UDRP, the Complainant argued that the Respondent had no rights or legitimate interests in respect of the Domain Name.  It stated that it had never authorised the Respondent to use its trade mark, and that the Respondent had not been commonly known by the trade mark.  The Complainant added that the Respondent was making neither bona fide commercial use nor legitimate non-commercial or fair use of the Domain Name and had never used it. 

The Respondent replied that he had used the Domain Name in connection with some of his business activities conducted under the name International Business Automation.  He explained that  he was in the information systems and telecommunications business and had traded as International Business Automation since 1995.  He provided a detailed curriculum vitae highlighting his experience and added that there were many organisations using the abbreviated name IBA (such as the International Bar Association or the Indian Banking Association) and some organisations actually called IBA (such as US dairy company IBA Inc., French soap manufacturer IBA SA, or IBA AG).  Lastly, he mentioned that his father and son were both named Iba. 

The Panel noted that, although the evidence submitted by the Respondent included a snapshot from archive.org that appeared to show that, by 2000 at least, the Respondent was conducting some business activity using International Business Automation, overall the evidence was relatively limited and rather unclear and difficult to follow in parts.  For example, the Panel pointed out that the name of the Respondent's father and son was unsupported by any documentary evidence and the Respondent's claim to have used the term "iba" on invoices and in emails was supported by very limited evidence.

Having said this, the Panel concluded that, regarding the second element of paragraph 4(a), it was unnecessary to consider the totality of the evidence in detail or reach a conclusion because the Complaint had failed on the third element.

Under the third element of paragraph 4(a) of the UDRP, the Complainant argued that the Respondent had chosen to register the Domain Name because he was aware of the Complainant and its usage of the term "IBA".  The Complainant added that, at the time, the Respondent had actual or constructive notice of its trade mark rights because its trade mark was well known and had a solid reputation worldwide when the Domain Name was registered and, as early as the end of the 1980s, the Complainant was offering its goods and services worldwide including in the United States.  Therefore the Respondent could not credibly claim to have been unaware of its trade mark.  

The Complainant also claimed that it had a better right to the Domain Name because the Respondent was not using it.  The Complainant added that the sole purpose of the Respondent's renewals of the Domain Name was to sell the Domain Name to the Complainant at an exorbitant price.  The Complainant made reference to its former representative approaching the Respondent in 2001, and indicated that the Respondent had never responded other than to invite the Complainant to make a considerable offer to purchase the Domain Name.  To support this claim, the Complainant provided email correspondence with a broker that it had instructed to purchase the Domain Name for USD 2,500 showing that the broker had advised that the Domain Name would likely have a premium cost of USD 25,000.  

The Respondent explained that he did not know that the Complainant existed until he was contacted in 2001 on behalf of the Complainant who sought to purchase the Domain Name and he had had a meeting with the Complainant’s representatives.  The Respondent argued that the Domain Name had been in use and indicated that the earliest entry available on archive.org was in 2000 showing a snapshot of a web page consisting of an enquiry form headed "International Business Automation".  The Respondent also stated that he had actually made similar usage prior to 2000.  To support this assertion, the Respondent made reference to a third-party site and a snapshot taken of that site in 1997.  The Respondent further argued that he had originally registered the Domain Name because it corresponded to his father's name and he had then used it in relation to a number of technology projects.  The Respondent added that he also owned the domain name iba.net and used it for email, and added that all emails sent using the Domain Name were redirected to the iba.net addresses.  To support this statement, the Respondent submitted some blank invoices showing an email address using iba.net, although the precise date was unclear to the Panel. 

The Panel considered that, although the Complainant had established that it was a large and successful business at the time of the Complaint and, to some extent, in 1995, that did not, in itself, prove the existence of a solid reputation in the Complainant's field of activity.  The Panel held that the evidence was insufficient to demonstrate that the Complainant enjoyed such a reputation outside the areas in which it operated.  The Panel pointed out that the term "IBA" was an acronym which was not inherently distinctive, for example in comparison with the acronym BMW. 

The Panel concluded that, on the evidence provided, it was more likely than not that the Respondent had registered the Domain Name without knowledge of the Complainant's trade mark and without the intention of taking unfair advantage of that trade mark.  Given this, the Respondent couldn't have registered the Domain Name in bad faith.  The Panel noted that the Respondent would have known about the Complainant's trade mark in 2001, when the Complainant tried to purchase the Domain Name.

In addition, the Panel added that there was no evidence that the Domain Name had been used in bad faith and underlined that the renewal of a domain name which was legitimately held did not amount to an act of bad faith, even if by the renewal date the Respondent has become aware of the Complainant and its trade mark.  

With respect to the Complainant's argument that it had a better right to the Domain Name because the Respondent was not using it, the Panel found that this was simply wrong, as there was no obligation on a domain name holder to make use of it.  Whilst passive holding could in some circumstances support a finding of bad faith, other factors were required to establish it.  The Complaint was therefore denied.

The Respondent requested a finding of Reverse Domain Name Hijacking (RDNH).  To successfully bring an RDNH claim, a Respondent must satisfy the requirements of paragraph 15(e)  of the UDRP, which provides that if "the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding."

The Panel upheld the Respondent's RDNH claim by noting that the Complainant was professionally represented and, as such, it should have been aware that, to demonstrate bad faith registration nearly 30 years before the Complaint was filed, it needed to establish that it had a significant reputation outside of its field of activity in the US at the time of registration, but it had not provided any evidence to establish that this was the case.  The Panel noted that the Complainant's claim had no reasonable prospects of success in light of the nature of the UDRP and the multiplicity of previously decided cases dealing with similar issues in relation to short acronym type domain names where there was a lack of targeting of the complainant's mark.  Furthermore, the Panel pointed out that the correspondence which took place between the Respondent and the Complainant's broker showed that, over 20 years before the Complaint was filed, the Complainant was aware that it would need to purchase the Domain Name if it wished to acquire it.  Finally, the Panel noted that the Complainant had carried out some research leading to it being aware of the possible use by the Respondent of "international business automation" in relation to his business, but the Complainant had not fully disclosed the details of the research.  The Panel concluded that this constituted a material omission.

Comment

This case highlights the heightened challenges in substantiating bad faith registration of a short acronym as a domain name, especially when such registration occurred a significantly long time prior to filing a complaint. Evidence of targeting of a complainant’s trade mark is key.

The decision is available here.

Back to the top.

Evidence of the registration or acquisition date is key under UDRP

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (the UDRP or the Policy) before the World Intellectual Property Organization (WIPO), a Panel refused to order the transfer of the disputed domain name caravana.com because the Complainant failed to provide sufficient evidence that the Respondent registered the domain name in bad faith, especially as the date of the domain name registration on the WhoIs predated the Complainant's trade mark rights by a number of years.

The Complainant was Carvana LLC, a company based in the United States. The Complainant operated an e-commerce platform for the buying and selling of used cars. The Complainant owned trade mark registrations in the United States for "CARVANA", the earliest of which was registered in April 2013.

The Respondent was hidden by a privacy service.  According to the WhoIs record, the disputed domain name was registered in March 2000.

In September 2022, the Respondent used the disputed domain name to redirect to a page within the Complainant's website at carvana.com after filtering through a series of URLs.  At the time of filing the Complaint, the disputed domain name resolved to a web page offering it for sale.

To be successful in a complaint under the UDRP, a complainant must satisfy each of the following three requirements under paragraph 4(a):

i) the domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and

ii) the respondent has no rights or legitimate interests in respect of the domain name; and

iii) the domain name has been registered and is being used in bad faith.

The Complainant asserted rights in the CARVANA trade mark, citing the brand's substantial growth since 2013, multiple trade mark registrations and prior UDRP decisions where panelists noted the notoriety of the CARVANA mark. The Complainant also contended that the disputed domain name was nearly identical to the CARVANA mark as it incorporated the CARVANA mark in its entirety with the addition of the letter “a”.  Furthermore, the Complainant argued that the Respondent lacked rights and legitimate interests in the disputed domain name, as, inter alia, it had no authorization from the Complainant to use the disputed domain name and used the disputed domain name to redirect traffic to the Complainant's website. The Complainant maintained that the Respondent's actions were in bad faith and were intended to capitalize on the Complainant's reputation and commercial success.

The Respondent did not reply to the Complainant's contentions.

With regard to the first element, the Panel was satisfied that the Complainant owned a trade mark registration for the CARVANA mark and had used such mark for many years. The Panel also found that the disputed domain name could be considered confusingly similar to Complainant’s CARVANA trade mark, as the mark was recognizable in the disputed domain name and merely differed by the addition of the letter “a” between “car” and “vana”.

In light of its decision under the third element of the UDRP, the Panel did not comment on the second element.

In evaluating the third element, the Panel considered whether the Respondent registered and used the disputed domain name in bad faith. The WhoIs record provided by the Complainant showed that the disputed domain name was registered in March 2000 and was used to divert internet traffic from the Complainant's official website at carvana.com in 2022.  However, the Panel noted that there was no evidence showing that the ownership of the disputed domain name had changed since 2000.  Given that the Complainant's trade mark rights only arose in 2013, the Panel found that, on the evidence adduced, the Respondent had registered the disputed domain name before the Complainant developed trade mark rights in CARVANA and so could not have been acting in bad faith.

In addition, the Panel found that the disputed domain name comprised the common Spanish word "caravana," which meant "caravan" or "trailer" in English.  Therefore the Complainant would also have needed to demonstrate that the registration aimed to exploit its CARVANA mark as a "typo" domain rather than its value as a common Spanish term.

The Panel found that, although the Respondent's lack of response and the redirection of the disputed domain name to the Complainant's website in September 2022 suggested bad faith, this was not sufficient to constitute evidence of bad faith registration in 2000, as required by the UDRP. In the absence of any evidence to the contrary, the Panel was constrained to find that the disputed domain name was registered before the Complainant acquired trade mark rights in CARVANA and that the Complaint failed on the third element. Notwithstanding this decision, the Panel underlined its reservations as to whether the ownership of the disputed domain name had indeed remained with the same registrant since 2000, particularly given the Respondent's "complete silence" during the course of the proceeding and the redirection to the Complainant's website in 2022.  The Panel acknowledged the possibility that additional evidence establishing a change of domain ownership after the accrual of the Complainant's trade mark rights may cast a different light on the Panel's assessment of the third element.  As a result, the Panel rendered its decision without prejudice to the Complainant potentially refiling a complaint in the event that it was able to establish, with credible evidence, that the ownership of the disputed domain name had changed after the Complainant had established trade mark rights in the CARVANA mark.

Comment

This case emphasizes the necessity for complainants to substantiate their arguments with robust evidence, especially concerning the timing of trade mark rights and domain name registrations.  The date on which a respondent registered or acquired a domain name is the date a panel will consider in assessing bad faith.  However, unlike the date of first registration, which appears on the WhoIs record, the date of any subsequent acquisition by a registrant on the secondary market is difficult to prove, although it is crucial when it comes to establishing targeting of trade mark rights by respondents, and thus bad faith.  In the case at hand, bad faith would simply have been impossible at the date of registration in 2000, many years before the Complainant’s trade mark rights had arisen, but quite possible in 2022 given the redirection to the Complainant’s website.  However, with no evidence that the disputed domain name had changed hands since it was registered in 2000, the Panel was obliged to deny the case due to the impossibility of bad faith targeting at that date.

The decision is available here.

Back to the top.

Domain name investor obtains finding of RDNH

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied a UDRP Complaint in relation to the disputed domain name playhouse.com.  The Panel found that although the first element of the UDRP was satisfied, the Complainant did "not come close" to establishing registration and use of the domain name in bad faith.  Further, the Complainant was found to have engaged in Reverse Domain Name Hijacking (RDNH) based on the unsupported claims made.

The Complainant was an Australian Company incorporated in July 2022 that operated an online subscription service enabling subscribers to post content and view content posted by other subscribers.  The Panel noted that most of the content posted on the Complainant's platform was adult in nature and that the Complainant billed itself as "an OnlyFans Alternative… With Fewer Restrictions". 

The Respondent was a domain name investor and website business developer based in Canada.

The disputed domain name was first registered on 2 August 1995 and was acquired by the Respondent on 11 October 2021.  At the time of filing of the Complaint, the disputed domain name resolved to a parking page with Pay-Per-Click (PPC) links.  In June 2019 and January 2020, the disputed domain name resolved to a parking page listing it for sale and the Complainant annexed a screen capture to the Complaint that indicated that the Respondent sought to sell the disputed domain name for up to USD 250,000, yet having received an anonymous offer for this amount, declined to sell it because of its intention to develop it "one day" for a business.

To be successful in a complaint under the UDRP, a complainant must satisfy each of the following requirements:

i) the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and

ii) the respondent has no rights or legitimate interests in respect of the domain name; and

iii) the domain name has been registered and is being used in bad faith.

The Complainant argued that it enjoyed unregistered or common law rights in the trade mark "PLAYHOUSE" since 2020, when it claimed to have commenced its business.  In particular, the Complainant argued that its alleged trade mark enjoyed a "potent reputation and significant consumer brand recognition".  The Complainant contended that it had established all three of the elements required under the UDRP for a transfer of the disputed domain name.

The Respondent's main contention was that it acquired the disputed domain name before the Complainant began to use the alleged "PLAYHOUSE" trade mark, and certainly before such mark achieved any notoriety, to the extent it achieved any.  The Respondent also requested that the Panel make a finding of RDNH against the Complainant on the grounds that it should have known that its complaint was doomed to fail.

Under the first element, the Panel found that the Complainant had established common law rights in the trade mark PLAYHOUSE since 2022 (rather than 2020) through evidence of use and some evidence of media recognition.  The Panel rejected the Complainant's contention that its operations began in 2020 and that it enjoyed a "potent reputation and significant consumer brand recognition" in the PLAYHOUSE trade mark since that date, noting that such allegation was "bald and unsupported".

The Panel found that the disputed domain name was identical to the PLAYHOUSE mark, so the Complainant had satisfied the first element.

The Panel declined to consider the second element in light of its analysis relating to the third element.

In relation to the third element, the Panel found that the Complainant did not even come close to establishing that the Respondent had registered and was using the disputed domain name in bad faith.  According to the Panel, the evidence suggested that the Respondent acquired the disputed domain name before the Complainant had made any use of the PLAYHOUSE trade mark.  The Panel found that the Respondent's explanation for its motives and plans for the Domain Name, notably to develop it in the future for a business, were plausible and agreed with the Respondent that the word "playhouse" was a common word that was widely used in its ordinary sense and had no link to the Complainant's relatively new business.  Finally, the Panel found that the fact that the Respondent had sought to sell the disputed domain name for profit did not constitute bad faith in the circumstances, given the lack of evidence that the Respondent targeted the Complainant's trade mark and the fact that "playhouse" was a common word as detailed above.

As a result of the lack of bad faith on the part of the Respondent, the Panel denied the Complaint. 

The Panel next considered RDNH and found that the Complainant had indeed committed RDNH.  Although the Complaint was eloquently composed, the Panel found that it was "replete with hyperbole and unsupported claims".  Such claims included that the Complainant first used the PLAYHOUSE mark in 2020 (i.e., before the registration of the disputed domain name), when all the evidence presented suggested that its first use was in 2022 (i.e., after such registration), and that the Respondent was a significant competitor, yet there was no evidence to support this claim.

Comment

This case illustrates the likely consequences of failing to support claims made in UDRP Complaints with credible evidence, in particular when seeking to establish common law rights dating from a specific date.  Failure to take into account well-established principles, laid down over a substantial body of UDRP cases, will usually lead to a denial.  Furthermore, it is clear that UDRP Panels will require very convincing evidence of bad faith targeting before ordering the transfer of valuable domain names, such as one word dictionary terms registered under .COM (as was the case here).  Such domain names are often worth significant sums of money on the secondary market and so transfer orders are never taken lightly by UDRP Panels.

The decision is available here.

Back to the top.

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.