On September 22, 2022, a decision rendered under the aegis of the Forum ordered the transfer of the domain name <arcelormittal.com.de> to the steel group ArcelorMittal (Forum, 2008561, ArcelorMittal (SA) v. Billy willy / ArcelorMittal BE Group SSC AB, 22 Sept. 2022, <arcelormittal.com.de>, transfert, panéliste Nicholas J.T. Smith). A few months earlier, a company called Big Fish Games had to take out-of-court proceedings concerning the domain name <bigfishgames.com.de> ((Forum, 1991809, Big Fish Games, Inc. v. Fuad Aliyev / IT Universe LLC, 10 mai 2022, <bigfishgames.com.de>, transfert, panéliste David E. Sorkin). A third dispute is pending before the Forum regarding the domain name rothschild.com.de (Forum, 2010912). The second-level domain (SLD) .COM.DE could be considered as confusing insofar as Internet users and companies could imagine that these domain names come from a legitimate authority, in this case, the German registry: DENIC. Similarly, the Forum has heard several disputes over domain names ending with .COM.SE suffix (e.g. Forum, 1984128, skechers.com.se, Skechers U.S.A., Inc. and Skechers U.S.A., Inc. II v. Klug Antje, 15 mars 2022, <skechers.com.se>, transfert, panéliste Nicholas J.T. Smith).
Analysts regularly see third-level domain names appearing in brand monitoring reports in the form brand.cctld.com or brand.com.cctld. The CentralNIC Registry provides these domain names. Unlike the German registry, DENIC, which does not offer an out-of-court procedure for German domain names (.DE), CentralNIC provides trademark owners with an out-of-court dispute resolution procedure called the CentralNIC Dispute Resolution Policy or CDRP (not to be confused with the out-of-court approach concerning Canadian domain names which the Canadian Internet Registration Authority also designates by the sign CDRP). Inspired by the Uniform Domain Name Dispute Resolution Policy (UDRP), the CDRP is very similar. There are, however, some noticeable differences, some procedural, some substantive.
Procedurally, a profound difference should be noted: prior mediation is provided for in Article 4.a of the CDRP. CentralNIC’s CDRP is not the only one to impose prior mediation on parties confronted with the problem of domain name ownership. On this point, the most emblematic procedure providing for prior mediation is the one created by the British register Nominet (article 10 of the Nominet Dispute Resolution Service Policy: nominet.uk).
Further, concerning jurisdiction, unlike the UDRP, a procedure for which several dispute resolution institutions have jurisdiction, section 4d of the CDRP provides for the exclusive jurisdiction of the Forum (CDRP Policy: centralnicregistry.com).
As for the differences on the merits, the main one concerns the difference in the requirement for proof of bad faith. Unlike the UDRP, which requires the trademark owner to prove bad faith on the day the domain name is registered and at the stage of its use, the CDRP provides a lighter burden of proof by opting for the alternative rule. However, in practice, given the UDRP case law relating in particular to the absence of use of the domain name, it must be recognized that this makes little difference.
To date, 89 decisions have been issued, with the transfer rate close to 100% (only two complaints have been withdrawn (Forum, 1888524, CDRP, accenture.com.se and 1767236, dailymail.uk.com). One can observe that the brands targeted most often are often well-known at an international or even global level. Here are a few examples: arcelormittal.com.de (Forum, 2008561); morganstanley.sa.com (Forum, 2004054) ; rothschild.de.com (Forum, 2003549); societegenerale.de.com (Forum, 1993588); nespresso.us.com (Forum, 1992311); tiktok.sa.com (Forum, 1974940); legohogwarts.ru.com. Interestingly, we observe that the number of procedures has doubled in 2022:
- 2014: 3
- 2015: 6
- 2016: 2
- 2017: 12
- 2018: 16
- 2019: 10
- 2020: 6
- 2021: 10
- 2022: 21
This increase in CDRP procedures can have several explanations. Some occur at the registration stage: an increase in the number of domain names such as trademark.cctld.com or trademark.com.cctld, which could be due to favorable pricing conditions and their inclusion in name registrars’ generators. Another explanation is the inclusion of these domain names in trademark protection strategies.
Finally, recourse to an extrajudicial procedure similar to the UDRP, well known to specialists, is valuable and practical. Since Web 3.0 is rising, it would be wise for blockchain domain name operators to take inspiration from alternative dispute resolution processes and procedures and offer an extrajudicial approach that could consist of the UDRP or a similar system.
