Dreyfus

On February 5, 2014, the domain name <canyon.bike> was registered anonymously with Godaddy.com, a registrar company. German company Canyon Bicycles GmbH responded quickly by filing an UDRP complaint.

WIPO panels usually do not take into consideration top – level suffixes such as .com or .fr. Yet in the present case, the Panel found that the .bike domain was equally relevant, not to assess the similarity between the disputed domain name and the trademark, but because it “describes a core product of the Complainant”, namely bikes. The Panel found that “given the advent of multiple new gTLD domain names, panels may determine that it is appropriate to include consideration of the top-level suffix of a domain name for the purpose of the assessment of identity or similarity in a given case, and indeed that there is nothing in the wording of the Policy that would preclude such an approach.”

This is however not the first time that such an approach has been used. The registrant of the domain name <tes.co> was found to be in violation of the trademark rights of Tesco, notwithstanding the dot between “tes” and “co.”

The Panel found that the three requirements for a successful UDRP complaint were satisfied, namely: the disputed domain name is identical or confusingly similar to the trademark, the registrant has no rights or legitimate interests in respect of the disputed domain name and the disputed domain name has been registered and is being used in bad faith. In the present case, both the reasoning and the decision of the Panel appear to be entirely justified.

With the arrival of new gTLD domain names on the market, cybersquatters are rushing to register the domain names of reputable brands. A few days after.clothing was made available, the domain names <adidas.clothing>, <burberry.clothing> and <tommyhilfiger.clothing> had all been registered.

Based on the arrival of hundreds of new suffixes, this decision was long overdue and must be welcomed. This decision will be useful to fight against cybersquatting. The general enthusiasm for the opportunities offered by the new suffixes must not leave room for cybersquatting which would be detrimental to the rights of trademark owners.

Dreyfus & associés specializes in disputes regarding domain names. For more information, feel free to contact us.

Established in 1998, ICANN regulates inter alia the allocation of domain names on the Internet. It has global jurisdiction and its decisions are binding de facto on States. Nevertheless, ICANN is a corporation created under Californian laws, which is hence subject to the California Attorney General and which ultimately falls under the United States Department of Commerce.

And this is all that is alarming the European Union. Following revelations of large-scale surveillance by the U.S National Security Agency, the European Commission is concerned about the lack of transparency of Internet governance. In a press release dated February 12 2014, it proposed a major reform, calling for “a more transparent, accountable and inclusive governance.”

The Commission proposes in particular concrete actions such as the establishment of an agenda for the change in the management of ICANN and IANA (Internet Assigned Numbers Authority), the creation of guidelines for Internet governance, or the establishment of a global process for major decisions. The main objective is to empower the various Internet actors.

In this regard, the Vice-President of the Commission Neelie Kroes stated that “the pluralism of actors on the Internet is an excellent driving force for innovation” and that “Europe must play a strong role in defining what the net of the future looks like.”

In the wake of revelations of large-scale surveillance and the arrival of new domain name extensions on the market, transparent and accountable governance appears to be essential.

The new gTLD domain names like .HOME, .BIKE or .PARIS are emerging on the market. Some take advantage of these launches to infringe well-known trademarks and domain names with these gTLD are already subject to UDRP procedures.

On 5 February, the domain name <canyon.bike> has been registered by a privacy shield service at the registrar Godaddy.com.

The German company Canyon Bicycles GmbH has promptly filed a UDRP complaint (Uniform Domain Resolution Policy) at World Intellectual Property Organisation (WIPO). The company intends to act under its intellectual property rights as it is the holder of several Canyon trademarks since 1993.

This complaint is the first UDRP procedure since the introduction of the new gTLD domain names on the market. IBM has also filed two complaints concerning the domain names <ibm.guru> and <ibm.ventures>. However, it concerns the URS procedures (Uniform Rapid Suspension). Unlike the UDRP procedures, the aim is not to result to the transfer or cancellation of the domain name but simply to obtain its suspension. On 12 February, the expert of National Arbitration Forum (NAF) has favourably acceded to the request of IBM and has ordered the suspension of the two domain names.

More than 1000 gTLD domain names will be spread out the coming months and along with these expansions conflicts will intensify. It will be interesting to see which of them will have an interest for the registrants as for the gTLD .CO. The registrant of the domain name <tes.co> was considered infringing the trademark of the company Tesco whereas the extension was not taken into consideration during the assessment of the similarity between the trademark and the domain name.

While the new top-level domain names extensions appear on the market, the Trademark Clearing House (TMCH) has revealed a report highlighting an alarming risk of cybersquatting in relation to major US companies’ domain names.

The TMCH is a mechanism set up by ICANN allowing the protection of trademark owners in the expansion of new top-level domain names. It allows the reporting of data related to trademarks in a centralised database before and during the launch of new top-level domain name extensions.

The TMCH study made on new extensions like <.web>, <.online>, <.blog> <.shop> and <.app> demonstrates that United States’ 50 most famous brands have all been pre-registered by unofficial parties. It further reveals that half of these trademark owners do have any principle domain names in existing extensions like <pepsi.us> or <kelloggs.net>. Also, Jonathan Robinson, Strategic Consultant to TMCH considered that “all brand names are at risk of intellectual property infringement online as the new TLDs are rolled out”.

Nonetheless, mechanisms have been set up to prevent these types of situations. Registration at TMCH therefore allows trademark owners to enforce their brands and to benefit from a preferential right of reservation during the priority period of Sunrise. Registration at TMCH also allows to be informed of all undue registration of domain names reproducing or imitating a trademark. Jonathan Robinson further stated that “prevention is better that cure” and that “by recording marks in the Clearinghouse, businesses will be safe in the knowledge that they have made the cornerstone investment in brand protection in new TLDs”.

More than 80% of the major US brands have already acceded to alternative dispute resolution procedures relating to domain names such as UDRP procedures. While cases of cybersquatting are expected to increase with the new top-level domain name extensions, the TMCH’s objective is to prevent such litigations.

If the aim of cyber squatters is to divert internet traffic on their websites by means of suggestive domain names, the medium-term objective is to negotiate at a reasonable price the domain names registered without the brand owners’ knowledge. The role of the TMCH in this context is essential for brand owners.

Dreyfus & associés is a TMCH accredited agent. For more information, please do not hesitate to contact us.

The 100 pioneer domain names of .PARIS have been revealed on last 21st February, but this is just a stage in the project of this new gTLD.

Firstly, it is important to note the 100 pioneers will be able to benefit from an address with .PARIS as from May 2014 during an exclusive period of 6 months whereas other domain names will be visible and accessible for sale only by the end of the year for the general opening.

Moreover, a Sunrise Period of 3 months will be opened for trademark owners as from the month of September 2014. The domain names reserved during this period will be allocated and available online only at its termination.

The new domain names are classified in various categories: Ambassadors (7), Business (8), Ecosystem and Individual Parisians (78), and Namespace Mandate (5). These will be granted to registrants for 3 to 5 years and they are:

• livraisons-restaurant.paris: Service connecting restaurateur making deliveries with clients,
• m.paris: Service allowing creation of an address like mon.adresse@m.paris,
• accessibilite.paris: Service of referencing accessible locations and equipment irrespective of the disability,
• reservation-hotels.paris: Service of hotel reservations in Paris approved by the Office of Tourism, and
• bandb.paris: Service of room reservations in guesthouses

In fact, there are 98 domain names out of which two have been reserved by the City of Paris for the general opening.

The City of Paris also proposes a procedure to oppose to pioneer names before the 21st March 2014. The request can be presented by any person providing evidence of its interest to act on absence of the Pioneer’s legitimate interest and on his bad faith.

The economic contributions of pioneers amount to 416 000 € in addition to the contribution in kind (for e.g. marketing communications aiming at enhancing the notoriety of the candidate’s project and the .paris project).

Find the list of the domain names in the press release of the City of Paris here.

Our consulting firm is at your disposition to advise you on the forthcoming Sunrise period.