Welcome to the first issue of our new format devoted to a short monthly selection of out-of-court decisions relating to domain names.
1. What were the chances of obtaining the transfer of a three-letter acronym domain name composed exclusively of consonants and acquired several years before the birth of the complainant’s trademark? Zero! (see also: iptwins.com, 2019-04-14; iptwins.com, 2020-12-30; iptwins.com, 2021-09-10). As a reminder, the panelist has the power to raise ex officio the issue of abuse of process, provided that the fair trial principles are respected (iptwins.com, 2020-09-28).
2. This decision, which concerns an acronym made up of the four consonants “FCSA”, directly contradicts what I have strongly argued in the previous paragraph. However, attention should be paid to the Dispute Resolution Service Policy principles. The summary decision procedure applies when the defendant’s default is certified (Art. 12 DRSP). After all, it is up to the domain name holder to deliver reliable and current contact details. It is undoubtedly worth remembering that the expeditious procedure was designed precisely to react to the frequent absence of the respondent. Therefore, in the event that the latter had not received the notification inviting him to participate in the proceedings, he could only blame himself. Anyway, this hypothesis is unlikely, as the cybersquatter is more inclined to reply to a purchase offer than a formal complaint. On the other hand, in the event that it was through his own negligence that he did not receive the cybersquatting complaint, he could still appeal under Section 20 of the DRSP. However, it must be recognized that the deadline is a bit short (three days, according to Section 20.4 DRSP).
3. Notch Up is a multi-talented French advertising agency. From a legal point of view, the marketing benefits of building a brand based on an existing expression can be thwarted by the legal disadvantages. Indeed, using generic words to develop a brand necessarily involves risks. However, such a disadvantage can be counterbalanced by setting up online monitoring targeting, inter alia, domain names. In the present case, correlating “Notch Up” and a top-level domain specifically designating the nature of the business of the complainant (agency) was sufficient to decide that the domain name was registered in bad faith. Moreover, the respondent had built a website imitating the complainant’s website, thus committing an infringement of intellectual property rights. Although the panelist is not competent to rule on this legal issue, copying the complainant’s website undoubtedly attests respondent’s bad faith.
4. Mr. Lumia is an Italian politician. Politicians are regularly targeted by cybersquatters (see, e.g. iptwins.com, 2018-12-29 and iptwins.com, 202-02-20). It is not uncommon for political experts to associate the names of politicians with brands, so much so that those concerned could find practical inspiration in brand protection strategies. Thus, domain name management could usefully be outsourced to be entrusted to an experienced specialist with the view of avoiding embarrassing situations such as negligent failure to renew the domain name (see, for example Giuseppe Lumia v. INOVAA, <giuseppelumia.it>, transfer, 22 November 2021 (sole panelist: Cristiano Bertazzoni) and <scottmorrison.com.au> (iptwins.com, 2018-12-29).
Source: Giuseppe Lumia v. INOVAA, <giuseppelumia.it>, transfer, 22 Novembre 2021 (sole panelist: Cristiano Bertazzoni).
5. The interest of this case lies less in the decision than in the brand protection strategy. Indeed, it is useless to devote more ink and time than necessary to evoke the tortuous explanations of the defendant on the circumstances surrounding the creation of the domain name or its position consisting in supporting, in an errant way, that he has an absolute right of ownership over the domain name. In contrast, the .COM.CN top-level domain should sound like a warning. Indeed, recent CIETAC decisions reveal a number of domain names with .COM.CN and .NET.CN, numerous enough to arouse the vigilance of brand owners (see CIETAC, CND-2021000036, 康泰纳仕 出版 简化 股份公司 （PUBLICATIONS CONDE NAST SAS） v. 张晓光, 2021-10-08, <voguestyle.cn> and <voguestyle.com.cn>; CIETAC, CND-2021000023, NOVARTIS AG v. 吴贵江, 2021-09-03, <zolgensma.com.cn>; CIETAC, CND-2021000028, 投诉 人 1 珞 拉芮丝 珠子 有限公司 （Lola Rose Jewelery Limited） v. 张培杰, 2021-07-28, <lolarose.net.cn>; CIETAC, CND-2021000018, 软 视 （上海） 软件 有限公司 v. 北京 易 简 视 源 科技 有限公司, 2021-06-30, <onzoom.cn> and <onzoom.com.cn>; CIETAC, CND-2021000011, 歌莲 化妆的 有限公司 （SOCIETE DE RESEARCH COSMETIQUE ， SARL） v. 张 蔚, 2021-6-21, <resultime.com> and <resultime.com.cn>; CIETAC, CND-2021000019, GENENTECH, INC. V. 冀佳 诺, 2021-06-21, <lucentis.com.cn>; CIETAC, CND-2021000012, 康泰纳仕 出版 简化 股份 公司 （LES PUBLICATIONS CONDE NAST SAS） v. 陈振鸿, 2021-6-18, <vogue.net.cn>; CIETAC, CND-2021000016, 雷德福 来 尔 有限公司 （Radio Flyer I nc.） v.王晓文, 2021-06-15, <radioflyer.com.cn>, to name only the most recent examples). Such circumstances should invite brand owners to audit their Chinese trademarks and domain names portfolios and, if necessary, register the .COM.CN and .NET.CN domain names are identical to their trademarks.
