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Domain name industry news

Oh .MY!

In June of this year, MYNIC, the Registry responsible for the country code Top Level Domain (ccTLD) .MY (Malaysia), relaunched the second-level .MY TLD, opening up registrations to the global market and removing all local presence restrictions.

Although one might have expected this to open the floodgates for new domain name registrations, this was not the case and at the end of August the .MY domain name count was 149,273, barely 3,000 domain names more than at the end of May.  This brought the total number of Malaysian domain names (including third-level domain names under extensions such as .COM.MY and .BIZ.MY, which are still restricted to local entities) to 313,588.

In preparation for the relaunch of .MY domain names to an international public in June, MYNIC partnered with Caymans-based Internet Naming Co (INCO) and Tucows Registry Services.

Shayan Rostam from INCO stated that MYNIC would continue to be the Registry for .MY, but that INCO would take on operations outside of Malaysia.  The deal would allow non-Malaysians to register .MY domain names for the first time, he said, although some Malaysian registrars have, up to now, offered a local presence to circumvent these rules.

The ccTLD .MY has been in existence since 1987 and, in April 2024, had under 313,000 registered domain names with roughly a 50:50 split between second and third-level registrations.  MYNIC told the local Malaysian press in April, before the launch was announced, that it hoped that by removing the local presence requirement and making the registration fee attractive it could hit the 400,000 domain name mark by the end of 2024.  

For more information or to register .MY domain names, please contact David Taylor or Jane Seager. 

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Get your .CV in

Cabo Verde (also known as Cape Verde), a former Portuguese colony located in the central Atlantic Ocean, about 570 kilometres off the West African coast with a population of only around 550,000 people, has recently started marketing its .CV country code Top Level Domain (ccTLD) globally on the back of its correlation with the acronym for “Curriculum Vitae”.

In doing so, Cabo Verde joins a number of other nations that market their ccTLDs on the basis of alternative meanings.  This list includes .TV (Tuvalu) (after the acronym for television), .ME (Montenegro) (for personal domains), .WS (Western Samoa) (marketed as an abbreviation for website), .FM (the Federated States of Micronesia) (promoted for its association with FM radio), .LA (Laos) (marketed to residents and businesses of Los Angeles), and Anguilla, which has seen the popularity of its .AI ccTLD skyrocket in recent years in view of its correlation with the acronym for “Artificial Intelligence”, currently a hot topic. 

The term “curriculum vitae” is a loanword from Neo-Latin (the Latin used in Europe from around 1500) that translates as “course of life” and which has come to be commonly associated with the summary of a person’s education, qualifications and work experience - a “CV” - that is such a vital tool in the process of job seeking.  It is this market that the Cabo Verde Registry is trying to tap into with its .CV ccTLD. 

The US-based corporation OlaCV was awarded a five-year Registry contract for the .CV Registry by the Cabo Verde regulator, Agência Reguladora Multissetorial da Economia (ARME), in 2023. Ope Awoyemi, the President of OlaCV, stated that:

“CV is a term used by professionals in Canada, Europe, Africa, India, and China. Combined, these markets have professional workforces and populations nearing 3.5 billion people, representing a significant addressable market.”

He went on to add, emphasising the economic benefits that await host nations as a result of such arrangements, that:

“The move to globalize .CV follows successful initiatives that have led to wide scale adoption of other country TLDs. For instance, Tuvalu's .TV domain and Anguilla's .AI domain have become lucrative assets, contributing significantly to their respective economies through registration fees.”

Although many .CV domain names are reasonably priced, any .CV domain name of six characters or less has premium pricing, which is a somewhat unusual policy.

Disputes under the .CV extension are subject to the Uniform Domain Name Dispute Resolution Policy (UDRP). 

Should you be interested in registering a .CV domain name, please contact David Taylor or Jane Seager.

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South Sudan allows registrations directly under .SS

The Registry of South Sudan, the world's newest nation located in East-Central Africa, is currently authorising domain name registrations directly at the top level under its country code Top Level Domain (ccTLD) .SS.

As regular Anchovy News readers may remember, in February 2019 we reported that the Republic of South Sudan, which seceded from Sudan in July 2011 further to an independence referendum, had finally been assigned the .SS ccTLD in January 2019 despite the controversy around these two letters, which are associated with the Nazi regime in Europe.

In June 2020, the .SS Registry finally launched its ccTLD and it became possible to register domain names at the second level under a number of unrestricted extensions such as COM.SS, .NET.SS, .BIZ.SS or .ME.SS, and restricted extensions (.ORG.SS for South Sudan NGOs, .EDU.SS for South Sudan Higher Education, .SCH.SS for South Sudan Secondary and Primary Schools, and .GOV.SS for South Sudan Government entities).

Over four years later, the Registry is now launching domain name registrations directly at the top level under .SS, without any restrictions.  The .CO.SS extension is also being launched at the same time without any restrictions. 

The launch started with a Sunrise Period, which is now being followed by a Landrush Phase.  An Early Access Phase will then take place before General Availability starts, as follows:

• Landrush: 20 September – 10 October 2024

During this period, anybody can apply for any available domain name, but at a premium price.  An auction will take place if there are several applicants for the same domain name.

• Early Access Period (EAP): 15 October – 25 October 2024

Before General Availability starts, applicants will have ten days to reserve domain names that are still available.  Prices will be lower than during Landrush, but higher than during General Availability.  

• General Availability: 1 November 2024

From 1 November onwards, anyone can register any available domain name on a first come, first served basis.

It is interesting to note that “SS” can have other meanings, for example it usually means “screenshot” over text and other chatting platforms.  It is also the ending of numerous English words.  The launch of .SS may therefore be attractive to internet users.  In any event, in view of the lack of restrictions, brand owners are advised to secure their domain names under .SS before they are snapped up by third parties.

The Registry's website is available here.

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

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NIC Costa Rica celebrates its 34th anniversary

NIC Costa Rica, the Registry responsible for running the .CR country code Top Level Domain (ccTLD) for Costa Rica, has recently celebrated its 34^th anniversary.

In September 1990, the International Assigned Numbers Authority (IANA) granted NIC Costa Rica, a Specialised Unit of the National Academy of Sciences, the administration of the .CR ccTLD for Costa Rica.  The Registry has, since its inception, aimed to promote .CR in the “commercial, academic, governmental, financial, health and organisational sectors”, and has been actively involved in the development and strengthening of the internet infrastructure in Costa Rica, which it believes is crucial for the growth of the “digital economy and the expansion of the local technological ecosystem”.

NIC Costa Rica has also worked on projects that are outside of the general domain name management area. This has included working and collaborating with national and international organisations, including LACNIC, ICANN, LACTLD, IETF and ISOC, as well as local institutions like MICITT, all with the aim of ensuring the security and resilience of the Internet within Costa Rica.

The Registry is also committed to providing training to educational institutions, which it believes has had an “extremely positive impact on society”. This has included providing training programs to primary school students with regard to the correct use of the internet, the dangers of using social networks and cyberbullying, as well as training to university students on subjects such as DNS, DNSSEC, Domain Name Dispute Resolution Policy and IPv6.

There are currently under 20,000 registered domain names managed by the .CR Registry.  Domain name registrations are possible directly at the top level under .CR, as well as at the second level under extensions such as .CO.CR.  Domain name registrations under both of these extensions are unrestricted, meaning that they are open to all entities without restrictions such as local presence or a matching trade mark. 

Rosalía Morales, Executive Director of NIC Costa Rica, stated that:

Working at NIC Costa Rica is a fascinating experience since the projects and topics we analyse change continuously and are directly related to the development of the country, the global Internet network and the technologies that affect innovation and global geopolitics. Over the last 34 years, we have seen the accelerated growth of the Internet, its role in the country's connectivity, the implementation of the latest DNS security technologies and the launch and growth of the Internet Neutral Exchange Point (IXP) among many initiatives.

To visit NIC Costa Rica’s website, please click here.

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Domain name recuperation news

From steel wheels to domain deals: why mangels.com isn’t going anywhere

In a recent decision under the Uniform Domain Name Dispute Resolution Policy ("UDRP") before the World Intellectual Property Organization ("WIPO"), a three member Panel refused to order the transfer of the domain name at issue because the Complainant failed to demonstrate that the Respondent had registered and used the domain name in bad faith.  

The Complainant was Mangels Industrial S.A., a manufacturing company based in Brazil, specialising in steel cylinders, wheels, and galvanising.

The Respondent was Mira Holdings, Inc., a domain name investor based in the United States.

The disputed domain name, mangels.com, was registered by the Respondent in March 2019.  At the time of filing the complaint, the domain name was listed for sale but did not resolve to an active website.

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

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. 

With respect to the first limb, the Complainant asserted that it held several Brazilian trade mark registrations for the term "MANGELS" dating back to 1968 and 1979.  The Complainant contended that its trade mark was well-established in the steel and manufacturing industry, with significant international presence and recognition.  The Panel found in favour of the Complainant, noting that the disputed domain name was identical to the Complainant’s registered trade mark "MANGELS." As such, the Complainant satisfied the first limb.

The arguments of the Complainant under 4(a)(ii) were set aside by the Panel on the basis that it was not necessary to make a decision on this point, given its findings under 4(a)(iii).

Turning to the bad faith requirement, the Complainant argued that the disputed domain name had been registered and was being used in bad faith. The Complainant asserted that the Respondent knew, at the time of registration, that this action would prevent the Complainant from using its "MANGELS" trade mark in a prominent top-level domain.  The Complainant pointed to the Respondent’s asking price of USD 61,000 for the domain and noted that the domain name had not been used for any active website. The Complainant contended that the Respondent’s primary intention in registering the domain name was to sell, lease, or otherwise transfer it to the Complainant for a sum exceeding the Respondent's out-of-pocket costs. Additionally, the Complainant believed that the inactive state of the domain name could have misled internet users into thinking it was connected to the Complainant and could have harmed the reputation of the "MANGELS" trade mark.

The Respondent refuted the Complainant’s allegations of bad faith, stating that it had no prior knowledge of the Complainant or its trade mark. The Respondent claimed that the domain name was purchased as a generic term with market value, and that the asking price was based on standard domain name valuation practices.  The Respondent maintained that its intent was not to target the Complainant, but to conduct its usual domain name trading activity.  The Respondent also argued that “mangels” is the plural form of a dictionary term referring to a root vegetable used as feed for livestock.  The Respondent also highlighted that “Mangels” is a surname, presenting search-based evidence that there are 1,276 individuals in the United States with that last name.  Furthermore, the Respondent provided examples of other commercial uses of the name MANGELS, designating various companies and third-party trade marks.

The Panel found no evidence or grounds to support the conclusion that the Respondent had knowledge of and targeted the Complainant’s trade mark.  According to the Panel, although the MANGELS trade mark is somewhat distinctive, it is not exclusive to the Complainant, as it is used by other entities in trade and also serves as a personal surname.  The Panel noted that the Complainant's trade mark registrations had limited geographic coverage, and there was no evidence showing reputation or public recognition of the Complainant’s trade mark that would indicate that the Respondent was aware of it at the time of registration.  The Panel stated that the Respondent had provided explanations for its purchase and proposed sale of the domain name that were unrelated to the Complainant's trade mark. Despite the Respondent’s high initial asking price of USD 61,750, the Panel did not find this price indicative of bad faith targeting of the Complainant.  As a result, the Complainant failed to prove that the Respondent had registered the domain name with knowledge of and intent to target the Complainant’s trade mark.  Therefore, the Panel denied the complaint.

Finally, the Panel also considered whether a finding of reverse domain name hijacking ("RDNH") was appropriate.  RDNH is defined in paragraph 1 of the UDRP Rules as "using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name".  In this case, the Panel deemed it justified to make a finding of RDNH, as requested by the Respondent.  The Panel noted that the Complainant had failed to renew its own registration of the disputed domain name and may have even requested its cancellation before attempting to reinstate it after the Respondent’s registration.  The Panel observed that the Complainant initially offered around USD 950 to purchase the domain name from the Respondent.  However, upon learning of the Respondent’s asking price, the Complainant chose to initiate UDRP proceedings instead, alleging that the Respondent had acted in bad faith.  The Panel found that the Complainant, having failed to re-register the domain and had its lower offers rejected, decided to pursue these proceedings as an alternative means to obtain the disputed domain name.  While it might be understandable for an unrepresented party to take such action, the Panel pointed out that the Complainant was legally represented and should have been advised that its claim was unlikely to succeed.

Comment

This decision highlights the importance of complainants carefully weighing up the option of filing a UDRP complaint as a means of obtaining a domain name before proceeding, particularly when faced with a registrant's high asking price.  Panels may issue a finding of RDNH in such cases, which may damage a complainant's credibility and hinder its ability to pursue future claims in UDRP or similar proceedings.  Panels and domain name registrars may approach subsequent complaints from the same complainant with scepticism.

You can find the decision here.

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Legitimate interests linked to prior use of a similar domain name

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a three-member Panel denied the transfer of the Domain Name at issue, considering that the Respondent had established rights or legitimate interests through its use of a substantially similar domain name long before the registration of the disputed Domain Name, among other things.

The Complainant was a Texas-based company known as "Pools123 Houston LLC", which was the listed registrant of the US trade mark for POOLS123, registered on 4 August 2020 and covering, inter alia, the installation of pools and spas.  The Complainant asserted use of this mark for over four years.

The Respondent was Aquamarine Pools of Texas, which had owned and controlled the domain name pools123.com since 2014.  The Respondent asserted that it had a long history of association with the Complainant, to the extent that the two parties, at least at some stage, had worked cooperatively on the POOLS123-branded business operations and had been represented by the same attorney.  They were now in dispute regarding ownership of the US mark for POOLS123. 

The disputed Domain Name, pools123texas.com, was registered by the Respondent in March 2023 and associated with a commercial site using the heading "Pools123 Texas", offering pool design and installation services.  Within the body of the website, the Respondent referred to itself as "Pools123" without the additional "Texas" geographic locator.

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

(a) 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

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

(c) The domain name has been registered and is being used in bad faith.

With respect to the first limb, the Complainant contended that the Domain Name incorporated its US mark in its entirety and was therefore confusingly similar to its trade mark.  The Respondent argued that the Complainant's nominal ownership of this mark was inconsistent with a prior understanding with the attorney representing various partners or former partners regarding assignment of this mark to an IP holding company, and provided evidence of the incorporation of Pools 123 IP Holdings LLC in 2022 to support this intent.

Given its findings under the second and third limbs, as a matter of administrative efficiency the Panel did not make a determination regarding the Complainant's assertion of rights in the trade mark, nor its confusing similarity to the Domain Name.

Regarding the second limb, the Complainant asserted that the Respondent had no rights or legitimate interests in the Domain Name because it was registered long after the Complainant registered its US mark and began using it.  The Respondent argued that it did have legitimate interests in the Domain Name given its ownership and continued use of a substantially similar domain name, pools123.com, since 2014.  The Respondent also underlined that it was exclusively associated with this name until 2020 when the Respondent brought others (including the Complainant) into its business enterprise and allowed them to enjoy limited use of and rights in the POOLS123 mark.

According to the Panel, there was unrebutted evidence that the Respondent registered the domain name pools123.com in 2014 and had operated a commercial website using this name at least since early 2016, long before its registration of the disputed Domain Name in 2023. Since the disputed Domain Name was substantially similar to the domain name pools123.com, and both domain names were being used to do business in Texas, the Panel found that the Respondent was commonly known by the Domain Name.  In the Panel’s opinion, Internet users and consumers would likely presume an association based on the confusing similarity between the two domain names.  In contrast, the Complainant had failed to acknowledge its commercial relationship with the Respondent or its prior knowledge of the Respondent's registration and use of the domain name pools123.com.  Furthermore, after being notified by WIPO of the identity of the Respondent, the Complainant had not made any substantive changes to its Complaint to address its dealings with the Respondent.  On this basis, the Panel held that the Complainant had failed to demonstrate that the Respondent lacked rights or legitimate interests in the Domain Name. The second limb was therefore not satisfied.

As far as the third limb was concerned, the Complainant claimed that the registration and use of the Domain Name was in bad faith as the Respondent was clearly targeting the Complainant's trade mark and attempting to take unfair advantage of the Complainant's reputation and goodwill attached to its trade mark.  The Respondent rebutted such assertions by highlighting its commercial partnership with the Complainant from 2020 to March 2024 in connection with the use of the Domain Name, noting that the Complainant had requested that it be placed on the Respondent's website associated with the Domain Name against a directory listing fee. 

Based on the unrebutted evidence provided by the Respondent, the Panel was of the view that it could not be presumed that the Complainant was the senior user of the POOLS123 mark for the purposes of determining bad faith conduct on the part of Respondent.  The third limb was therefore not satisfied and the Complaint was denied.

It is worth noting that the Panel not only denied the Complaint but also found that the Complainant had engaged in Reverse Domain Name Hijacking.  In the Panel’s opinion, the Complainant should have known that it could not establish the Respondent's lack of rights or legitimate interests in the Domain Name in view of its previous dealings with the Respondent, as detailed above.

Comment

This UDRP decision highlights the complexities that may arise when business relationships involve shared or overlapping use of a trade mark and/or domain name. For brand owners, this case underscores the importance of clearly defining and documenting ownership rights and usage agreements, especially when working with partners or collaborators.  Failing to do so can lead to expensive intellectual property disputes.

The decision is available here.

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ZAPA's complaint zapped: no bad faith found

In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panelist denied a Complaint for the disputed domain name zapa.com, finding that the Complainant failed to establish that the Respondent had registered the disputed domain name in bad faith.

The Complainant, ZAPA, was a French textile brand created in 1972.  The Complainant was the owner of several trademark registrations for ZAPA, including International Registration No. 494843, registered on 10 July 1985.  The Complainant was also the owner of the domain name zapa.fr, registered since 1997, which resolved to its official website.

The Respondent was Gever, Sharon of Israel.

The record showed that the disputed domain name zapa.com was first registered on 3 February 1996.  At the time of the decision, the disputed domain name resolved to an inactive web page. 

To prevail under the UDRP, the Complainant must demonstrate that the requirements of paragraph 4(a) are met:

i) The disputed domain name is identical or confusingly similar to a trademark 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.

Identity or Confusing Similarity

Under the first element, the Panel found that the Complainant had established rights in the ZAPA trademark and that the disputed domain name zapa.com was identical to this trademark.

Rights or Legitimate Interests

The Panel did not find it necessary to discuss the second element, given the finding under the third element.

Bad Faith

Under the third element, the Complainant argued that the Respondent registered and was using the disputed domain name in bad faith.  The Complainant asserted that the Respondent acquired the disputed domain name in 2014, submitting historic WhoIs records dating from May 2014 and June 2014 as evidence.  The earlier WhoIs record listed the Respondent as the registrant, while the latter listed a proxy service.  The Panel took the view that these WhoIs records did not conclusively demonstrate a change in registrant at that time.  In the absence of evidence to the contrary, the Panel considered that the Respondent had held the domain name since its initial registration in 1996, requiring an analysis of the Respondent's intent to profit from or exploit the Complainant's trademark at that time, rather than in 2014.  For completeness, the Panel added that analysis of the Respondent's intentions as at 2014 would not have altered the Panel's conclusions under the third element. 

The Complainant further asserted that its ZAPA trademark was well known in 2014, and that the Respondent could not have been unaware of it when registering the disputed domain name.  The Panel found that the Complainant had failed, however, to provide sufficient evidence of public recognition of the ZAPA trademark, particularly in 1996 when the disputed domain name was registered.  The Panel found there to be no evidence that the Respondent registered the disputed domain name with knowledge of the Complainant's trademark. The Panel emphasised that the four-letter string "zapa" could have legitimate uses unrelated to the Complainant's trademark.

As regards the Respondent's bad faith use of the disputed domain name, the Complainant invoked the doctrine of passive holding, arguing that the Respondent's lack of active use of the domain name amounted to bad faith.  Citing the lack of evidence in the case about the public recognition of the Complainant's ZAPA trademark to permit an inference of targeting, the Panel determined that the Respondent's non-use of the disputed domain name did not support an inference of bad faith in this case. 

As a result, the Panel concluded that the Complainant failed to establish that the disputed domain name was registered and used in bad faith, thus failing the third element of the UDRP.

Comment:

This case serves as a cautionary tale for potential UDRP Complaints against long passively held domain names.  Inactivity alone does not always indicate bad faith.  This is particularly the case where the domain name in question could have legitimate uses unrelated to the trademark, as is often the case with short three or four-letter domain names, or domain names composed of dictionary terms.  A successful passive holding claim requires the Panel to be able to draw an inference that the Respondent's registration and subsequent inactivity was part of a deliberate scheme to target the Complainant.  Complainants must not only prove their trademark rights but also demonstrate that the Respondent specifically targeted those rights with the domain name registration.  Without such proof, even well-established trademark rights may not meet the UDRP's criteria for bad faith. 

The decision is available here.

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Authored by the Anchovy News team.

Anchovy News editorial team:

• Laëtitia Arrault
• Gabrielle Creppy
• Sean Kelly         
• Ying Lou
• Cindy Mikul
• Eliza Parr
• Thomas Raudkivi
• Maria Rozylo
• Jane Seager
• 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.