PDF version: 2022-01-06-iptwins-review-EN
1. The are various alternative ways of settling disputes relating to domain names. One of them is the negotiation and settlement agreement carried out during an extrajudicial procedure. There are several reasons for a trademark owner to take this path. This is particularly the case when the respondent demonstrates, in an irrefutable manner, that he has a legitimate right or interest in the domain name. In such a situation, the complaint would fail, and entering into a settlement agreement would be the best option. One can guess that this was the case, for example, concerning the domain name <youchooseyourgift.com>, because of the unmistakably descriptive character of the trademark (WIPO, D2021-3212, Choose-your-gift.com LLC, <youchooseyourgift.com>, terminated). In the same vein, it is difficult to see how complaints against the domain names <luxury-magazine.eu>, on the one hand, and <luxuryauction.com> and <luxuryauctions.com>, on the other hand, could have been successful (WIPO, DEU2021-0028, Black Card LLC v. Giuliano Canovese, Spiritual Sun Wellness and Spa Limited, December 28, 2021, <luxury-magazine.eu>, denied, sole panelist Nick J. Gardner; Forum, FA2111001974395, Platinum Luxury Auctions LLC v. Sherman L. Ragland, II, December 28, 2021, <luxuryauction.com> and <luxuryauctions.com>, denied, sole panelist Paul M. DeCicco).
2. The settlement agreement concluded during extrajudicial proceedings is relatively frequent. Here are some recent examples: WIPO, DNL2021-0056, OANDA Corporation, <oanda.nl>, Terminated; WIPO, DAU2021-0030, Ethique Limited, <ethique.com.au>, Terminated; WIPO, D2021-3414, Tradera Sweden AB, <tradera.org>, Terminated; WIPO, D2021-3742, French National Olympic and Sports Committee, <chamonix1924.com>, Terminated; WIPO, D2021-3403, Laboratoires Expanscience, <laboratories-expanscience.com>, Terminated; WIPO, D2021-3995, Banque De France, <banque-de-france.com>, Terminated; WIPO, D2021-3607, Dr. Ing. h.c. F. Porsche AG, <porsche-lifestyle.com>, Terminated; WIPO, D2021-3688, LEA Nature Services, <leanature.net> and <leanature.org>, Terminated; WIPO, D2021-3695, LIBBS Farmacêutica Ltda., <Libbs.com>, Terminated). Given the confidential nature of the settlement agreement, it is not possible (nor preferable) to know the compromises made on both sides. However, in most cases, the reason is financial. Indeed, if the respondent agrees to transfer the domain name for free or against payment of a reasonable sum of money, the complainant may have an interest in withdrawing his complaint. This is the case where the complainant who submitted his complaint to the Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO) finally withdraws it before the panel to be appointed. In such a situation, WIPO would refund part of the processing fees, the amount of which may vary depending on the work done by the center (Schedule of Fees under the UDRP (valid as of December 1, 2002) : ompi.int).
3. In the Forum FA2111001974940 case, concerning the domain name <tiktok.sa.com>, the respondent hoped to keep this domain by arguing that he had previously requested Bytedance’s consent. As the latter did not reply, the respondent felt free to create and use the said domain name (Forum, FA2111001974940, Bytedance Ltd. v. Redacted for Privacy / Privacy service provided by Withheld for Privacy ehf, December 24, 2021, <tiktok.sa.com>, transfer, sole panelist Darryl C. Wilson).
4. Niantic was pushed to initiate UDRP proceedings for <niantic.careers> (WIPO, D2021-3801, Niantic, Inc. v. Privacy service provided by Withheld for Privacy ehf / Redde reddy, December 29, 2021, <niantic.careers>, transfer, sole panelist Lynda M. Braun). This top-level domain (TLD) was at the heart of several procedures in 2021 (WIPO, D2021-2155, Klarna Bank AB v. Withheld for Privacy Purposes, and privacy service provided Withheld for Privacy ehf / Gabriella Garlo, August 24, 2021, <klarna.careers>, transfer, panelist Martin Schwimmer; WIPO, D2021-1165, Callaway Golf Company v. Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Anthony Fulce, Callaway Golf, May 24, 2021, <callawaygolf.careers>, transfer, panelist Colin T. O’Brien; WIPO, D2021-2654, Sandbox Studio, LLC v. Privacy service provided by Withheld for Privacy ehf / Daniel Matthew, Deckers Brands, October 6, 2021, <creativedrive.careers>, transfer, sole panelist Harrie R. Samaras; WIPO, D2021-3629, Sandbox Studio, LLC v. Robert carpi, December 14, 2021, <creativedrives.careers>, transfer, sole panelist Ingrīda Kariņa-Bērziņa; WIPO, D2021-1428, Virgin Enterprises Limited v. Withheld for Privacy Purposes, Privacy service provided by With held for Privacy ehf / Daniel Kim, July 12, 2021, <virginpulse.careers>, transfer, sole panelist Andrea Mondini; WIPO, D2021-2885, Equinor ASA v. Withheld for Privacy Purposes, Privacy Service Provided by Withheld for Privacy ehf / Gabriella Garlo, December 8, 2021, <equinor.careers>, transfer, sole panelist Federica Togo; WIPO, D2021-2270, Regeneron Pharmaceuticals, Inc. v. Privacy service provided by Withheld for Privacy ehf / Gabriella Garlo, October 6, 2021, <regeneron.careers>, transfer, sole panelist Benoit Van Asbroeck). These decisions also make it possible to observe that the defendant named “Gabriella Garlo” often appears. The plurality of defeats in the UDRP proceedings constitutes an element likely to establish bad faith. Beside, it might be useful for brand owners to ensure that they are in control of the .careers, .career, .jobs, and even .hr (Croatia) top-level domains.
5. A domain name portfolio manager must devote conscientious engagement to the top-level domains specially created for the sector of activity of the brand concerned. In the previous monthly selection, I mentioned the <notchup.agency> case, retrieved by an advertising agency (iptwins.com, 2021-12-03, No. 3). Similarily, PaySend Group retrieved <paysend.money>, identical to the trademark “PAYSEND”, registered for financial services (CAC, UDRP, 104089, PaySend Group Limited v. Anatolii Lenchenko, 2021-12-15, <paysend.money>, transfer, sole panelist Anthony Gold). Here is a domain name that the complainant will be happy to keep and develop for its business purposes.
6. In the same vein, Bouygues, which operates in several sectors, including that of construction, had to initiate a procedure to obtain the transfer of the domain name <bouygues-construction.construction> (CAC, UDRP, 104160, Bouygues v. Bouchon Marlene, 2021-12-14, <bougues-construction.construction>, transfer, sole panelist Vojtěch Trapl). This domain name was not created randomly but because the institutional domain name of this branch of Bouygues is <bouygues-construction.com>. No one could guess that a cybersquatter would create a domain name like this one. For a multi-talented company like Bouygues, both commercially and legally, it makes sense to ensure control of strategic domain names for each of the many business sectors, including <bouygues.construction>, among others.
7. It is essential to keep an eye on top-level domains relating to sales, including .SALE, especially during the holiday season. Indeed, such TLDs facilitate confusion, thereby placing counterfeiters in a comfortable position. The WIPO D2021-3505 case is a perfect example. Gibson, the famous guitar maker, had to initiate UDRP proceedings to retrieve the domain name <gibson.sale>, used to sell counterfeit products (WIPO, D2021-3505, Gibson Brands, Inc. v. Withheld for Privacy ehf / I y, December 17, 2021, <gibson.sale>, transfer, sole panelist Dawn Osborne). It can be argued that it would have been reasonable to secure this domain name to protect the brand image and consumers. In other words, the most intuitive domain names must not be left to cybersquatters and counterfeiters. In contrast, cybersquatting of the domain name <gibson-guitars.club> was relatively less predictable (WIPO, D2021-3656, Gibson Brands, Inc. v. Super Privacy Service LTD c / o Dynadot. / Wills Eldren, December 27, 2021, <gibson-guitars.club>, transfer, sole panelist John C. McElwaine).
8. .IO is not a new gTLD but a ccTLD assigned to the British Indian Ocean Territory), and this ccTLD is on the rise because of “input/output”. Recently, Bayerische Motoren Werke AG (BMW) had to initiate proceedings for the domain name <bmw.io> (WIPO, DIO2021-0012, Bayerische Motoren Werke AG v. Domain Privacy Ltd/DNS Admin, October 1, 2021, <bmw.io>, transfer, sole panelist Steven A. Maier), and there are many other recent examples.
9. Typosquatting is the act of creating or acquiring a domain name that is almost identical to a brand with the view of generating some profit. Typosquatting is the most pernicious form of cybersquatting. On the one hand, the countless combinations of characters (ascii and non-ascii) make the typosquatting possibilities endless. In other words, under the current state of the law, abolishing typosquatting is illusory. On the other hand, the risk of confusion may be high enough to enable scam attempts of any kind (phishing in the first place) or the sale of counterfeit goods. The WIPO cases D2021-3652 and D2021-3620, which concern typosquatting cases associated with the alleged impersonation of one or more third parties, show symptoms of possible fraud (WIPO, D2021-3620, Compagnie de Saint-Gobain v. Name Redacted, December 16, 2021, <saint-qobain.com>, transfer, sole panelist Fabrizio Bedarida; WIPO, D2021-36 52, Compagnie De Saint-Gobain v. Name Redacted, December 16, 2021, <saintqobain.com>, transfer, sole panelist Fabrizio Bedarida). In the same vein, we can also mention <boehringer-ingeheim.org>, which differs from the trademark “Boehringer Ingelheim” only by the removal of the letter “L” (CAC, UDRP, 104178, Boehringer Ingelheim Pharma GmbH & Co.KG v. Khalid chemicals, 2021-12-19, <boehringer-ingeheim.org>, transfer, sole panelist Hana Císlerová).
10. Where possible, it is certainly preferable to submit a single complaint against several domain names. Thus, in the WIPO case D2021-3201, Facebook, as the owner of the “OCULUS” and “QUEST” trademarks, started proceedings to retrieve thirty-five domain names incorporating these trademakrs. According to the WIPO Jurisprudential Overview, the complainant must demonstrate that the domain names are controlled by the same person (para. 4.11.2, WIPO Jurisprudential Overview 3.0). Here, to grant consolidation, the sole panelist made the following observations: i) the substantial similarity of the websites designated by the domain names; ii) the short period of time during which the domain names were created; iii) thirty-four domain names have been created under the same registrar; iv) the domain names reproduce the “OCULUS” and/or “QUEST” trademarks; v) the arrangement of the domain names, each reproducing one or two of the said trademarks in association with a generic term (such as “buy”, “clearance”, “sale”, “deals”, “vr”) (WIPO, D2021-3201, Facebook Technologies, LLC v. Super Privacy Service LTD c / o Dynadot / wills eldren, Theda Folkerts, et al., December 6, 2021, transfer, sole panelist Lynda M. Braun).
11. The Danish company Arla Foods Amba had to start a cnDRP proceedings to retrieve <arlafoods.org.cn> (HKIAC, DCN-2101018, Arla Foods Amba v. Wu Yanrong /吴艳荣, December 14, 2021, <arlafoods.org.cn>, transfer, sole panelist Shirley Lin). On the merits, the complainant was asserting its rights on its international trademarks designating China and on its domain names, including <arlafoods.cn> (China). Arla Foods Amba had no difficulty obtaining the transfer of the domain name. On the procedural side, brand owners should keep in mind that the Chinese procedure, known as cnDRP, provides for a limitation period of three years from the creation or acquisition of the domain name (concerning the acquisition, see iptwins.com, 2020-12-06). Here, the domain name had been created in November 2020, about a year before the beginning of the procedure, which corresponds to the average time reaction of brand owners (iptwins.com, 2020-11-30). Finally, beware of third-level domain names, especially in China: .com.cn, .net.cn or even .org.cn. Arla Foods Amba also obtained the transfer of <arlaafoods.co.uk> (Nominet, Summary Decision D00024134, Arla Foods Amba and 256 Digital Agency, 2 December 2021, <arlaafoods.co.uk>, transfer, sole panelist Jason Rawkins). Nothing suggests, in this case, that the respondents in the Chinese and UK proceedings are, in fact, the same person. However, such a situation may arise and, given the similarities of the principles and rules governing out-of-court domain names disputes, it could be useful to consider the consolidation of proceedings where different regulations govern the disputed domain names.
12. Talking about Chinese third-level domains, CIETAC data provide many recent examples, including the following CIETAC cases: CND-2021000042, 爱 萃 科 公司 （ATRECA, INC.) V.刘美生, 2021-12-31, <atreca.com.cn>, transfer, sole panelist 霍爱民; and CIETAC, CND-2021000053, 嘉莉慧 芭 国际 股份 公司 GERRY WEBER INTERNATIONAL AG) v.王晓文, 2021-12-27, <atreca.com.cn>, transfer, sole panelist 李勇.
13. The French company Établissements Sogal obtained the transfer of <sogal.co.uk>. As a reminder, the DRS Policy does not require the complainant to be the owner of a trademark registered in the United Kingdom (Nominet DRS Policy: nominet.uk), nor the rules governing the registration of British domain names, at least for .co.uk and .uk (Nominet Registration Rules: nominet.uk). However, in any case, the complainant must demonstrate prior rights. Here, the panelist considered, among other assertions, that given the turnover of the complainant, the latter had acquired rights on the name “SOGAL”, although not registered in the United Kingdom. In addition, Article 5.3 of the DRS Policy provides that “There shall be a presumption of Abusive Registration if the Complainant proves that the Respondent has been found to have made an Abusive Registration in three (3) or more DRS cases in the two (2) years before the complaint was filed.” (Section 5.3, Nominet DRS Policy: nominet.uk). The proof of such prior cases having been provided, the panelist considered that the respondent had registered the domain name in bad faith (Nominet, DRS D00024177, Établissements Sogal v. Fundacion Comercio Electronico, 22 December 2021, <sogal.co.uk>, transfer, sole panelist Mark de Brunner).
14. At first glance, the transfer of the domain name <digi-key.hk> (Hong Kong) by the HKIAC DHK-2100185 decision may arouse curiosity as the domain name components refer to the generic description of a product (a digital key). However, the circumstances demonstrated that the respondent’s illicit use of the domain name prevented him from asserting any right or legitimate interest. Indeed, the respondent used the domain name in a fraudulent manner (commercial emails sent to third parties, the said emails including the postal address of the complainant) (HKIAC, DHK-2100185, Digi-Key Corporation v. Digi-Key Electronics Asia Pacific Limited, December 14, 2021, <digi-key.hk>, transfer, sole panelist Nathalie Dreyfus). The illicit use of a domain name can never confer a right or legitimate interest (para. 2.13 WIPO Jurisprudential Overview)
15. One of the golden rules of the management of trademarks and domain names portfolios is to secure the ownership of the trademark and the corresponding domain name, both being indivisible (hence “IP Twins”). Thus, the filing of an Italian trademark must be concomitant with the registration of a domain name identical to the said trademark’s verbal component. The significance of the rule rests on two essential needs: the need to use the domain name for marketing/commercial purposes and, legally speaking, the imperative necessity to secure the domain name. The itDRP case concerning the domain name <bendessere.it> perfectly illustrates this point. The Italian company Solgar, owner of Italian trademarks with the word element “Bendessere”, registered in 2016, had failed to register the domain name <bendessere.it> which, therefore, was created by a third party in 2020. An itDRP procedure followed, at the end of which Solgar obtained the transfer of the domain name (CRDD, Solgar Italia – Multinutrient s.p.a. v. iberAdv S.r.l.s, 13 dicembre 2021, <bendessere.it>, transfer, sole panelist Francesca d’Orsi).
16. Still in Italy, a fratricidal dispute arose over the domain name <vincenzoattolini.it>, identical to the patronymic name of Mr. Vincenzo Attolini, but registered by the company MTZ International S.r.l., managed by his brothers Giuseppe and Massimiliano Attolini. The disputed domain name was redirected to <cesareattolini.com>. From a procedural point of view, two observations shall be made. First, the panelist considered having jurisdiction despite legal proceedings before a Neapolitan court. Second, the question of accepting the submission of the respondent, sent after the deadline, was raised. In the absence of a request for an extension and in the absence of explanations likely to justify the delay, the panelist decided that the response should not be accepted. On the merits, it was decided, on the one hand, that Giuseppe and Massimiliano Attolini had no rights to the first name “Vincenzo” and, on the other hand, that the redirection of the domain name in dispute to the website of the respondent aimed to prevent the complainant from exploiting his first and last name commercially. These are the reasons which led to the transfer of the domain name (PSRD, Vincenzo Attolini v. MTZ International S.r.l., December 21, 2021, <vincenzoattolini.it>, transfer, sole panelist Noemi Ruda).
17. For more than ten years, the Italian company Mondadori Media Spa, owner of the “Grazia” brand designating a newspaper founded in 1938, has been trying to get its hands on the domain name <grazia.net>, registered in 1998 by a natural person named Graziella. After taking the case to the Italian courts in 2010, Mondadori Media was successful in 2020. However, after ten years of proceedings, the transfer of the domain name never took place. Under these circumstances, Mondadori Media initiated a UDRP proceeding, the decision of which was rendered on December 27, 2021 (CAC, UDRP, 104163, Mondadori Media S.p.a. v. Grazia Visconti, 2021-12-27, <grazia.net>, transfer, sole panelist Ivett Paulovics). We can learn from the decision that the Italian company has never obtained the authentication code (or auth-code), the password required to complete the transfer of a domain name. Given the means of coercion available in Italian law to enforce a final judgment, such a situation is surprising. But unsurprisingly, the extrajudicial proceedings resulted in a decision to transfer the domain name.
