Domain names: collection of recent extrajudicial proceedings that could have been avoided


introduction

1. Solutions to combat cybersquatting/typosquatting

2. Specialized TLDs

3. Geographic TLDs

4. TLD under the brand

5. Hyphen: with or without?

Conclusion

introduction

From the outset, it should be remembered that the number of top-level domains available does not allow the development of a complete portfolio of domain names. Moreover, this situation is exacerbated by the constant use of typosquatting or the juxtaposition of a word, most often of a generic or geographical nature. In other words, absolutely and perfectly anticipating abusive domain name registrations is worth nothing. Might as well count the stars! Added to these circumstances is the threat of damage to brand image through counterfeiting, unfair competition, phishing, scams or fake news.

Brand owners faced with such a deplorable situation are advised to use defense strategies. This primarily involves preventive recording, monitoring and, where appropriate, legal action.

1. Solutions to combat cybersquatting / Typosquatting

Preventive registration consists of registering brand-identical domain names in all vital TLDs, i.e. historical (.com, .net, .org, .info), specific and unambiguous (e.g. . fashion, .boutique or .shop for the fashion industry) and geographical areas corresponding to the territories in which the brand is present. This twinning rule (hence “IP Twins”) ensures control of the geographical domain name (ccTLD) corresponding to a territorial brand: trademark registered in France / nomdedomaine.fr; registered trademark in Switzerland / domainname.ch. Beyond that, when the budget allows it, the registration of domain names in ccTLDs corresponding to territories in which the brand is not registered can be profitable, at least when this is made possible by the registration conditions. set by the registry in charge of the administration of the ccTLD concerned. In short, as nature abhors a vacuum, it is better to fill it.

The purpose of monitoring is to alert the trademark owner to the appearance of domain names that are identical or similar to the trademark. In the case of a portfolio of domain names composed using preventive registrations, monitoring allows the detection of secondary domain names (as opposed to “vital”) and similar domain names (typosquatting). The analysis of the data collected informs the trademark holder, on the one hand, of the risks resulting from the existence or use of the identified domain names and, on the other hand, of the various measures that can be taken with regard to the circumstances of the case (replenishment, direct or anonymous purchase, negotiation or legal proceedings).

Finally, the legal procedure can be judicial (before state courts) or extrajudicial (the most emblematic procedure being the Uniform Domain Name Dispute Resolution Policy or UDRP).

A brief look at recent cases of cybersquatting reveals the effectiveness of monitoring systems capable of detecting abusive registrations in all TLDs and all languages. Out-of-court proceedings relating to trademark-like domain names are endless.

However, we are surprised to note that many amicable procedures relating to domain names identical to trademarks could have been avoided by preventive registrations, whatever the nature of the TLD: specialized (table 1) or geographical (table 2) .

2. Specialized TLDs

The example of the lego.art domain name is interesting. In August 2020, Lego announced the launch of a new collection dedicated to art. However, he had not registered lego.art. Unsurprisingly, this domain name was registered by a third party in January 2021, which resulted in extrajudicial lawsuits. Finally, the parties reached an agreement (WIPO, D2021-2205). This omission could potentially be explained by the company’s desire not to disclose to the general public the nature of the collection to come by registering the lego.art domain name. However, this hypothesis is implausible because the preventive registration of the domain name could have been done anonymously.

The case (WIPO, D2021-1180, ELO v. 晁越 (Chao Yue)August 5, 2021) and the case (D2021-1636, L’Oréal Privacy Service provided by Retained for Privacy ehf / KHALID AjanJuly 12, 2021) are equally interesting. Auchan operates in mass distribution, while Kiehls manufactures and sells cosmetics. Auchan and Kiehls are also brands whose reputation is largely based on many shops, stores and boutiques. These two examples, among many others, tend to demonstrate that the preventive registration of domain names in historical extensions alone has become insufficient and must be extended to specialized extensions (in this case, for example, .drive, . grocery, .shop or .store for large retailers and .beauty, .boutique, .cosmetics, .shop or .store for a cosmetics brand).

In the same order of ideas, we can usefully refer to the following cases: Sézane being a fashion brand (WIPO, D2021-2248, Benda Bili against François Joseph de BoissieuAugust 18, 2021), the .live extension appearing unavoidable in the media sector (D2021-2415, PINK TV Cihan Sabyan, Angels Models LTD UK 12848828September 13, 2021), and which is more alarming in this case since the transfer request was rejected (WIPO, D2021-1228, BML Group Limited Orange Casino Ltd. Private Registration, NameBrightPrivacy.com / Max Wood Registration Private, Domains By Proxy, LLC / Jorn Oranje / Nevada x / ML Groottebrug, Sersk BV / Eric Mijnlieff / Marc GreenJuly 20, 2021).

More generally, certain TLDs require special attention, in particular “corporate” ones such as .carreers, .company., .corporate, .enterprises, .holding, .industries or .group.

However, some cases of cybersquatting (domain name identical to the brand) cannot be anticipated. The typical model is a brand-identical domain name with a TLD that has nothing to do with the goods or services for which the brand is registered. Thus, Dalkia, which specializes in energy services and energy production, could not anticipate the registration, by an unscrupulous third party, of the domain name dalkia.ninja (D2021-2100, procedure completed). Hence the importance of using monitoring services capable of detecting such domain names.

3. Geographic extensions

The registration of domain names corresponding to the territories in which the brand is present cannot be considered as an option. Not only for legal reasons related to brand protection but also because marketing through a continental TLD (.africa, .asia, .eu, .lat), a national TLD (.au for Australia, . fr for France, .es for Spain, .eu for the European Union, .ch for Switzerland and many others), a regional TLD (.bzh for Brittany, .cat for Catalonia or .re for Reunion) or a local TLD (the many TLDs called cityTLDs) means proximity, trust and deference to consumers. Consequently, the registration of domain names identical to the mark is essential wherever the mark exists.

For example, the Pakistani company Zameen Media had initiated an aeDRP procedure (United Arab Emirates or United Arab Emirates) to take control of claiming a significant commercial presence in the emirate (WIPO, DAE2021-0002, Zameen Media (Private) Limited v Rashed Saeed Saif Aleter AldhanhanTh, February 16, 2021). Rigorous application of the twinning rule (one trademark/one domain name) would have been sufficient to avoid the inconvenience of legal proceedings.

4. The TLD, an integral part of the brand

Sometimes a generic TLD (excluding brandTLDs) is a component of a brand. In such a situation, domain name registration is essential.

Thus, UDRP procedures relating to domain names and initiated respectively by the companies “Allergy Partners” and “Unique Photo”, could have been avoided by the prior registration of the domain names concerned (WIPO, D2021-1341, Allergy Partners, PLLC Withheld for Privacy, Privacy service provided by Withheld for Privacy ehf / Gabriella GarloJune 20, 2021 and WIPO, D2021-1461 Unique Photo, Inc. c. unknownDate unknown, procedure completed).

Similarly, companies developing loyalty programs should pay particular attention to TLDs such as .gold and .vip (e.g.: WIPO, D2021-1663, Hertz System, Inc. Privacy Service provided by Retained for Privacy / Gabriella Garlo hertz.goldJuly 13, 2021, regarding the domain name Where WIPO, D2016-1919, Accor and SoLuxury HMC against He Yong JianNovember 9, 2016, regarding the domain name ).

4. Hyphen: with or without?

Many trademarks refer to the name of a natural person or consist of two or more words. Very often, the question is: with or without hyphen(s)? However, the question should not arise. Only the answer “with and without” is valid. Excluding one of the two options is tantamount to giving the remaining domain name to a cybersquatter. Here again, recent case law offers examples of procedures that could have been avoided by registering the domain name concerned, a fortiori in the case of a legacy TLD such as .com (v. e.g.: WIPO, D2021-1235, GRANDSONS c. Domain Administrator, Hush WhoIs Protection Ltd.June 7, 2021, transfer ; WIPO, D2021-1898, Ivy Hill Asset Management, LP Domain Administrator, Privacy Protect, LLC (PrivacyProtect.org) / Johnson, GNAME.COM PTE. LTD.August 24, 2021, Transfer; WIPO, DEU2021-0012, SAMSE Company against Nicolas MabileauJune 20, 2021, regarding the domain name the plaintiff operating the domain name ).

Conclusion

The management of domain name portfolios requires a perfect knowledge of existing TLDs and regular audits.

Finally, on the budgetary level, it should be remembered that, in almost all cases, the costs generated by extrajudicial procedures have amply covered those of renewal for decades, thus making it possible to act more on cases of typosquatting.

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