Uncategorized Domain names: collection of recent extrajudicial procedures that could have been avoided – Lexology
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1. Solutions to combat cybersquatting/typosquatting
2. Specialized TLDs
3. Geographical TLDs
4. TLD as part of the brand
5. Hyphen: with or without?
From the outset, it should be remembered that the number of top-level domains available precludes developing a comprehensive domain name portfolio. 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 worthless. One might as well count the stars! Added to these circumstances is the threat of brand image damage through counterfeiting, unfair competition, phishing, scams, or fake news.
Brand owners facing such a deplorable situation are urged to use defense strategies. In the first place, these involve preventive registration, surveillance, and, where appropriate, legal proceedings.
1. Solutions to fight against cybersquatting / Typosquatting
Preventive registration consists of registering domain names identical to the brand in all vital TLDs, that is to say, historical (.com, .net, .org, .info), specific and unambiguous (for example .fashion, .boutique or .shop for the fashion industry) and geographic 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 trademark: trademark registered in France / domainname.fr; trademark registered in Switzerland / domainname.ch. Beyond, when the budget permits it, the registration of domain names in the ccTLDs corresponding to territories in which the trademark is not registered can be profitable, at least when this is made possible by the registration conditions set by the registry responsible for the administration of the concerned ccTLD. In short, since nature abhors a vacuum, it is better to fill it.
The purpose of monitoring is to alert the brand owner to the appearance of domain names identical or similar to the brand. In the case of a domain name portfolio composed with the help of preventive registrations, monitoring makes it possible to detect secondary domain names (as opposed to “vital”) and similar domain names (typosquatting). Analysis of the data collected informs the trademark owner, on the one hand, of the risks resulting from the existence or use of the domain names identified and, on the other hand, of the various measures that can be taken having regard to the circumstances of the case (backorders, direct or anonymous purchase, negotiation or legal proceedings).
Finally, legal proceedings 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 cybersquatting cases reveals the effectiveness of surveillance systems capable of detecting abusive registrations in all TLDs and languages. Out-of-court proceedings involving domain names similar to trademarks are endless.
However, we are surprised to note that many out-of-court proceedings relating to domain names identical to trademarks could have been avoided by preventive registrations, regardless of the nature of the TLD: specialized (Table 1) or geographic (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, it had failed to register lego.art. Unsurprisingly, this domain name was registered by a third party in January 2021, which gave rise to extrajudicial proceedings. Eventually, the parties settled (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 upcoming collection by registering the domain name lego.art. However, this assumption is implausible because the preventive registration of the domain name could have been done anonymously.
The <auchan.online> case (WIPO, D2021-1180, ELO v. 晁越 (Chao Yue), August 5, 2021) and the <kiehls.boutique> case (D2021-1636, L’Oréal Privacy Service Provided by Withheld for Privacy ehf / KHALID Ajan, July 12, 2021) are equally interesting. Auchan operates in mass distribution, while Kiehls make and sell cosmetic products. Auchan and Kiehls are also brands whose reputation rests substantially on numerous boutiques, stores, and shops. These two examples, among many others, tend to demonstrate that the preventive registration of domain names in only historical extensions has become insufficient and must be extended to specialized TLDs (in this case, for example, .drive, .grocery, .shop or .store for mass distribution and .beauty, .boutique, .cosmetics, .shop or .store for a cosmetic brand).
In the same vein, one could usefully refer to the following cases: <sezane.fashion>, Sézane being a fashion brand (WIPO, D2021-2248, Benda Bili contre François Joseph de Boissieu, 18 août 2021), <pinktv.live>, the .live TLD appearing essential in the media sector (D2021-2415, PINK TV Cihan Sabyan, Angels Models LTD UK 12848828, September 13, 2021), and <oranje.casino>, which is more alarming in this case since the transfer request was rejected (WIPO, D2021-1228, BML Group Limited Oranje Casino Ltd. Private Registration, NameBrightPrivacy.com / Max Wood Registration Private, Domains By Proxy, LLC / Jorn Oranje / Nevada x / M.L. Groottebrug, Sersk BV / Eric Mijnlieff / Marc Green, July 20, 2021).
More generally, some TLDs need special attention, particularily the “corporate” ones such as .carreers, .company., .corporate, .enterprises, .holding, .industries, or .group.
However, some cybersquatting (domain name identical to the trademark) cases cannot be anticipated. The typical model is a domain name identical to a trademark with a TLD that has nothing to do with the products or services for which the trademark is registered. Thus, Dalkia, which specialized 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 terminated). Hence the importance of using surveillance services capable of detecting such domain names.
3. Geographical 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 the protection of the trademark 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 Réunion) or a local TLD (the many TLDs known as cityTLDs) means proximity, trust, and deference to consumers. Therefore, registration of domain names identical to the trademark is essential wherever the brand exists.
For example, the Pakistani company Zameen Media had initiated an aeDRP procedure (United Arab Emirates or UAE) to take control of <zameen.ae>, claiming a significant commercial presence in the emirate (WIPO, DAE2021-0002, Zameen Media (Private) Limited v. Rashed Saeed Saif Aleter Aldhanhani, February 16, 2021). A rigorous application of the twinning rule (one trademark/one domain name) would have been adequate to avoid the inconveniences of legal proceedings.
4. The TLD, part of the brand
Sometimes a generic TLD (excluding brandTLDs) is a component of a brand. In such a situation, registration of the domain name is critical.
Thus, the UDRP procedures relating to the domain names <allergy.partners> and <unique.photo>, initiated respectively by the companies “Allergy Partners” and “Unique Photo”, could have been avoided by the previous registration of the domain names concerned (WIPO, D2021-1341, Allergy Partners, PLLC Withheld for Privacy Purposes, Privacy service provided by Withheld for Privacy ehf / Gabriella Garlo, June 20, 2021 and WIPO, D2021-1461 Unique Photo, Inc. c. inconnue, Date inconnue, procédure terminée).
Likewise, companies developing loyalty programs should pay close attention to TLDs such as .gold and .vip (e.g .: WIPO, D2021-1663, Hertz System, Inc. Privacy service provided by Withheld for Privacy / Gabriella Garlo hertz.gold, July 13, 2021, concerning the domain name <hertz.gold> or WIPO, D2016-1919, Accor and SoLuxury HMC v. He Yong Jian, November 9, 2016, concernant le nom de domaine <sofitel.vip>).
4. Hyphen: with or without?
Many brands 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. Ruling out one of the two options equals 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 historical TLD such as .com (v. , e.g .: WIPO, D2021-1235, PETITS-FILS v. Domain Admin, Hush WhoIs Protection Ltd., June 7, 2021, <petis-fils.com>, transfer ; WIPO, D2021-1898, Ivy Hill Asset Management, L.P. Domain Admin, Privacy Protect, LLC (PrivacyProtect.org) / Johnson, GNAME.COM PTE. LTD., August 24, 2021, <ivy-hill.com>, Transfer; WIPO, DEU2021-0012, Société SAMSE contre Nicolas Mabileau, 20 juin 2021, concerning the domain name <groupesamse.eu>, the complainant operating the domain name <groupe-samse.fr>).
Managing 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 proceedings amply cover those of renewal for decades, thus making it possible to act more on typosquatting cases.
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