domain name

ICANN’s Accreditation of Blockchain-Specialized Companies: A New Chapter for Domain Names

The Internet Corporation for Assigned Names and Numbers (ICANN), plays a pivotal role in maintaining the security, stability, and interoperability of the internet. As a regulatory body, it also ensures to stimulate competition and develop policies for unique Internet identifiers.

ICANN’s Role in the Internet Ecosystem

ICANN is at the heart of the domain name management system, overseeing the registrar accreditation process. To be accredited, an entity must meet strict criteria including significant financial considerations, such as a minimum working capital. Following the approval of the application, an accreditation agreement is signed with ICANN. This regulatory framework ensures that the internet remains a globally open and accessible platform, safeguarding the security and stability of the domain name system.

Accreditation of Freenam and Unstoppable Domains by ICANN

Recently, ICANN accredited two companies specializing in blockchain technologies: Freenam and Unstoppable Domains. These accreditations were surprising, especially considering these entities were once critics of ICANN. This integration symbolizes a significant evolution in the internet ecosystem, reflecting an openness towards technological innovations and new paradigms in domain name management.

Freenam and Unstoppable Domains can now offer gTLDs (Generic Top-Level Domains), top-level domain extensions used globally, like “.com” or “.net”, and country-specific ccTLDs (Country Code Top-Level Domains), such as “.fr” for France or “.de” for Germany.

Before Accreditation: The Web3 Domain Offering

These entities already offered Web3 domain names, such as “.eth” or “.wallet”. These domain names differ radically from traditional extensions like “.com” as they do not name an IP address but rather a public key used for sending and receiving crypto assets on the blockchain, similar to an interactive IBAN capable of not only facilitating financial transactions but also interacting with smart contracts.

A Web3 domain is designed to be uncensorable and immutable. It allows users to link an easily memorable blockchain address to their crypto wallet, website, or social media profiles, without worrying about censorship or suspension of their domain name by a third party. These technical and functional characteristics invite us to question the suitability of the term “domain name”. Some authors suggest they be called “digital wallet names”.

While gTLD-type classic domain name extensions are assigned and managed under the control of ICANN, there is no international entity or organization for Web3 domain names, which are registered on a public blockchain, inherently decentralized. Moreover, these Web3 domain names are issued by naming companies that do not retain any administrative rights over these domain names or the smart contracts of the issued NFTs.

Future Perspectives

This accreditation is likely to intensify competition in the domain name sector, offering more choices and innovative features to users, in line with blockchain advancements. Benefits for end-users include more choices and enhanced security, as no third party can intervene to modify or delete these blockchain domains, thus eliminating the need for periodic renewal.

Conclusion

This new step in domain name regulation underscores ICANN’s continuous adaptation to new technological realities and its crucial role in facilitating an orderly transition to more innovative and secure domain name systems.

Thanks to its expertise in Web 3.0, Dreyfus Law Firm supports you through every stage of your blockchain projects.

Dreyfus Law Firm partners with a global network of lawyers specialized in intellectual property.

 

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Protect Your Company’s Image, Brands, and Domain Names with Our New Domain Name Monitoring Service!

In today’s digital environment, businesses are increasingly exposed to various risks related to the security of their online assets. Domain names, in particular, have become prime targets for cybercriminals and other malicious actors seeking to exploit a brand’s reputation or engage in cybersquatting. Aware of these challenges, Dreyfus Law Firm introduces its new Domain Name Monitoring Service, an innovative and comprehensive solution designed to proactively protect your company’s image, brands, and domain names.

 

The Importance of Domain Names in Today’s Digital Landscape

Domain names are much more than just a web address. They are your company’s gateway to the digital world, the online identity of your brand, and a key element of your business strategy. They convey your brand image, serve as a point of contact for your customers and partners, and are often integrated into your digital marketing efforts. However, the increased importance of domain names has also caught the attention of cybercriminals.

 

These actors exploit domain names in various ways to harm businesses. Whether through the creation of fraudulent websites using similar domain variations (a practice known as typosquatting) or by registering similar domains to lure your customers into phishing scams, the risks are real and multifaceted. Additionally, some malicious actors use these domains to set up email servers to launch deceptive email campaigns aimed at stealing sensitive information or spreading malware.

 

For all these reasons, proactive monitoring of your domain names has become an absolute necessity. Simply registering a domain name and assuming it is protected is no longer enough. You need to continuously monitor similar domain names, their usage, and their integrity, and be ready to react quickly if an issue arises. This is where Dreyfus Law Firm’s Domain Name Monitoring Service comes into play.

 

A Service Designed for Multi-Dimensional Protection

Our Domain Name Monitoring Service stands out for its holistic approach and its ability to cover all critical aspects of similar domain names. It is built on three main pillars: monitoring WHOIS records, online content publication, and email server activation associated with monitored domains.

 

  1. WHOIS Record Monitoring: WHOIS is a public directory containing information about domain name owners, including their contact details, domain creation and expiration dates, and other relevant details. By monitoring these records, we can immediately detect any unauthorized or suspicious changes that could indicate an attempt to take control of your domain (e.g., a change in ownership or DNS servers). This information is crucial for anticipating threats and taking necessary action before any damage is done.

 

  1. Online Content Publication Monitoring: Monitoring content published under domain names associated with your brand is equally essential. This pillar of the service focuses on detecting fraudulent, defamatory, or simply illegal content published on domains linked to your company. For example, a website that imitates yours and publishes false or malicious information can cause significant harm to your reputation. By quickly detecting content related to monitored domain names, we can promptly take the necessary legal action to have it removed.

 

  1. Email Server Activation Monitoring: Finally, one of the most insidious aspects of domain-related cyberattacks is the activation of email servers to launch phishing or spam campaigns. By monitoring the activation of these servers, we can detect and neutralize these threats to limit the risk of them reaching your customers or partners. This type of monitoring is especially important in a context where email remains one of the preferred attack vectors for cybercriminals.

 

Monitoring Tailored to Your Specific Needs

We understand that each company is unique and that digital security needs can vary greatly from one organization to another. That’s why our Domain Name Monitoring Service is fully customizable. We offer two monitoring frequencies: weekly or daily, depending on your specific needs and the level of risk you are exposed to.

 

Weekly Monitoring: For companies whose domain names are less likely to be attacked or who have less sensitive digital assets, weekly monitoring may be sufficient. This monitoring mode allows for the detection of changes or suspicious activities regularly enough to anticipate and manage risks without requiring real-time monitoring.

 

Daily Monitoring: For companies with highly sensitive digital assets or those operating in sectors where cybersecurity risks are particularly high, such as finance, healthcare, or e-commerce, daily monitoring is recommended. This mode allows for almost instant response to any suspicious changes, thereby limiting the risks of malicious exploitation of your domain names.

 

Two Operational Modes for Optimal Responsiveness

To better meet our clients’ expectations, we have designed two distinct operational modes for our Domain Name Monitoring Service:

 

  1. Automatic Notifications: This mode is ideal for companies that want to be informed in real-time of changes or suspicious activities related to their domain names. Whenever a modification is detected, whether it’s a change in WHOIS information, the publication of new online content, or the activation of email servers, you will be immediately alerted. This system allows you to react quickly to protect your rights and prevent irreversible damage to your brand or digital assets.

 

  1. Legal Analysis and Recommendations: This mode offers an even higher level of service by including the intervention of our legal experts. Each detected change is carefully reviewed by our team of lawyers, who assess the relevance of the changes and determine if they pose a threat to your company. If a risk is identified, we provide detailed recommendations on the actions to take to manage this threat. This approach allows you to benefit not only from real-time monitoring but also from tailored legal expertise, ensuring that you receive only relevant alerts and are fully equipped to anticipate and resolve issues related to monitored domain names.

 

Why Choose Dreyfus Law Firm’s Domain Name Monitoring Service?

Dreyfus Law Firm is distinguished by its expertise in intellectual property and cybersecurity, as well as its commitment to providing personalized solutions tailored to each client’s specific needs. By opting for our Domain Name Monitoring Service, you benefit from robust and effective protection against digital threats, supported by a team of experienced professionals.

 

Our holistic and proactive approach allows you to secure your domain names optimally, ensuring that every aspect of their use is monitored and protected. Additionally, our ability to offer in-depth legal analyses and personalized recommendations makes us a partner of choice for any company concerned with protecting its digital assets in an ever-evolving landscape.

Conclusion

In a world where digital threats are constantly evolving, it is essential not to leave certain domain names unmonitored. Dreyfus Law Firm’s Domain Name Monitoring Service is designed to provide you with peace of mind by ensuring continuous and proactive protection of your digital assets. Whether you choose automatic notifications or detailed legal analysis, you can count on our expertise to secure your domain names and protect your business from the growing risks of cyberspace.

 

Don’t wait to take action. Contact us today to learn more about our Domain Name Monitoring Service and discover how we can help you secure your digital assets for a safer and more secure future while keeping your budget under control.

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New AFNIC Mediation Procedure: Fast and Free Dispute Resolution for Domain Name Holders

La nouvelle mesure de médiation de l’AFNIC

New AFNIC Mediation Procedure: Fast and Free Dispute Resolution for Domain Name Holders

 

On July 3, 2023, AFNIC launched a mediation procedure to resolve disputes between right holders and domain name holders. The aim of this innovative measure is to offer parties a free, amicable means of resolving disputes, limited, however, to domain names managed by AFNIC (“.fr”).

The main role of AFNIC (Association Française pour le Nommage Internet en Coopération) is to manage the domain name registry in France (.fr).

 

What Is Afnic’s New Mediation Procedure?

 

The AFNIC mediation procedure is a free service set up to settle disputes relating to “.fr” domain names. It aims to provide a rapid and effective solution to disputes that may arise between domain name holders, registrars, and third parties. Mediation is based on an amicable process, which means that it takes place without recourse to the courts, enabling the parties involved to reach an agreement without incurring additional costs.

The procedure is simple and accessible to all parties concerned. To initiate mediation, one of the parties must submit a request to AFNIC, providing information on the dispute in question, the domain names involved, and the reasons for the dispute. Once the request has been received, AFNIC can appoint a mediator to deal with the dispute. The mediator must be neutral and impartial.

Once this has been done, the mediator will contact the parties to hear their arguments and help them find common ground. This is a confidential process, usually conducted online. The significant advantage of this approach is that the dispute can be resolved without the parties having to face each other physically.

 

What Are the Advantages of Mediation?

 

AFNIC mediation offers a number of advantages for parties involved in a domain name dispute:

Firstly, the mediation procedure enables the parties to reduce their costs considerably, especially when compared with other, much more costly procedures.

Secondly, unlike legal proceedings, which can take months or even years, AFNIC mediation offers a rapid resolution, usually within a few weeks. This is also a real advantage for the parties, especially in view of the long delays associated with the usual procedures.

The mediation process is also confidential, preserving the reputation and confidentiality of the parties involved. The remote procedure facilitates interaction between the parties, who are not obliged to be in the same room or in direct communication to resolve the dispute.

Mediation also enables the parties to find creative, customized solutions that meet their specific needs. In this respect, it is a flexible measure.

Finally, it is a method of resolution that encourages cooperation and communication between the parties, thus facilitating an amicable resolution of the dispute.

AFNIC’s free mediation procedure is a valuable resource for holders of <.fr> domain names faced with disputes. It offers a rapid, confidential alternative to legal proceedings, enabling parties to resolve their disputes amicably. If you’re involved in a .fr domain name dispute, don’t hesitate to consider AFNIC mediation as an effective solution for reaching a fair and rapid agreement. You can well imagine its value in cases where the parties are willing to find an amicable solution… that’s what mediation is all about!

 

For expert guidance  on AFNIC’s mediation process, contact Dreyfus today for a free consultation to secure your online presence.

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Legal Watch : A public figure’s name constitutes a right that can be the basis for UDRP proceedings

Less than a month after the 2022 presidential elections, a WIPO Arbitration and Mediation Center’s Expert rendered a decision regarding a domain name reproducing the name of the re-elected candidate Emmanuel Macron.

 

The domain name in dispute, <emmanuel-macron.com>, had been registered on the 3rd October 2015, during the time when Emmanuel Macron was still the Minister of Economy, Industry, and Digital Technology. Far from merely imitating the future president’s name, this litigious domain name would redirect to this website, which in fact, was the official website of the adverse polemist candidate during the 2022 presidential election. In this respect, we note that the domain name did not redirect to content related to Mr. Eric Zemmour before 2022 (according to an Archive.org search).

 

 

 

 

 

The complainant logically argues in their complaint that they must fulfill the requirements of paragraph 4(a) of the Policy, where it is specified that there are three cumulative elements necessary to claim the transfer of the disputed domain name.  These are :

 

♦ The similarity of the domain with a right of the complainant.

  • The lack of right or legitimate interest in the domain name on the respondent’s part.
  • The proof of bad faith registration and use by the registrant.

 

The interest of this case stands within two main points : the assessment of the similarity between the disputed domain name and the complainant’s prior rights, and the characterization of the registrant’s legitimate interest.

 

The complainant presents his arguments based on the existence of non-registered rights to the trademark “EMMANUEL MACRON”, a concept no longer existing under French law (except for well-known trademarks). If, by the simple fact that a domain name contains a family name that is not sufficient enough to justify an interest in bringing an action, it is important to note that under the Policy, the Experts’ assessment varies depending on the use of the family name made by the complainant. Here, the domain name was reproducing both the first name and the family name of Mr. Macron.

 

The Expert considers that when a person’s name is used as a trademark-like identifier in commerce, a complainant may be able to establish unregistered rights from that name to succeed in the UDRP proceedings. In this case, the Expert explains and outlines that the complainant’s use of the name “Emmanuel Macron” is not limited to his political activities but also extends to a commercial use being in this case, the publication and sale of books. Therefore, from the commercial use of his name, the complainant satisfies the requirements of the Expert. The Expert in retrospect acknowledges him as holding a non-registered trademark right. Therefore, the identity of the signs in comparison is established.

 

As trademark specialists, we would have appreciated a more puristic demonstration. In France, trademark rights cannot be acquired through simple use without registration (except for well known trademarks). In this case, it was up to the complainant to demonstrate that he had acquired trademark rights under Common Law or that the name “EMMANUEL MACRON” was a well-known trademark for certain goods and/or services.

 

We assume that the case was urgent and that the Expert wanted to do the right thing in this unacceptable situation. The complainant was fortunate that the case was assigned to an Expert who wanted to achieve a fair decision at the expense of trademark laws.

 

The Expert then raises the question of legitimate non-commercial or fair use of the domain name, according to paragraph 4(c)(iii) of the Policy.

In this case, the disputed domain name, redirects to the website of another opposing political figure. Therefore, the use of this domain name does not seem commercial and therefore, could more likely fall into the scope being freedom of speech.

 

However, previous experts have ruled that the right to legitimate criticism does not necessarily extend to the registration or use of a domain name which is identical to a trademark or a right, when it could create a risk of confusion through impersonation. Therefore, the use of the name EMMANUEL MACRON to redirect to his opponent’s website, Eric Zemmour, would incur a risk of implicit affiliation with the complainant.  This would also constitute, on the part of the respondent, an attempt to misleadingly divert Internet users, especially since the respondent cannot claim to be known or be recognized under the name “EMMANUEL MACRON”.

 

As a result, and according to paragraph 4 (c) (iii) of the Policy, the Expert has determined and decided that it cannot therefore, be considered as a legitimate non-commercial or fair use status. In conclusion, the registration and use in bad faith were also acknowledged for the same reasons. As the domain name was registered at the end of 2015, the panel observed that the complainant had already acquired significant notoriety as a public figure in France. Moreover, the redirection to the website of a political opponent was likely to mislead Internet users and disrupt the complainant’s activities.

 

In retrospect, this case could have been subject to much harsher and serious consequences, as the intent seemed to take the form of manipulating an electorate in the run up to the presidential election, rather than taking advantage for commercial purposes.

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The Culturespaces company must return the domain names and social network content to the city of Nîmes

NîmesOn the 16th of May 2022, the Council of State (Conseil d’Etat) handed down a decision in its 7th and 2nd chambers following the appeal lodged by the company ‘Culturespaces’ regarding the interim order issued on December 13th, 2021, by the Nîmes Administrative Court.

Culturespaces operated under a public service delegation, for the touristic and cultural exploitation of several sites in the city of Nîmes: the Nîmes arenas, the Maison Carrée and the Magne Tower. In order to do this, Culturespaces registered domain names for these sites belonging to the city of Nîmes.

At the end of the public service concession agreement, the company refused to return the intangible assets to the city of Nîmes. The city then referred the matter to the interim proceedings judge who ruled in favour of Culturespaces.

The Council of State ruled that the intangible assets, notably the domain names and social network content, were necessary for the operation of the public service and that they were assets likely to be qualified as assets returned from the concession.

The Council of State therefore ordered Culturespaces to return all the intangible assets necessary for the operation of the public service to the municipality of Nîmes.

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No cybersquatting in the event of uncertainty regarding the transfer of a trademark

veille(WIPO, Arbitration and Mediation Center, Case No. D2022-0770, 11 May 2022, BH Vigny, BH Hotels, BH Balzac v. Paulo Ferreira, MBI Holdings)

 

In the decision held on May 11th, 2022, companies BH Vigny, BH Hotels, BH Balzac, all belonging to the same group, saw their UDRP complaint get rejected for lack of precision on an ongoing legal procedure.

The dispute involved five different domain names, namely <amarantebeaumanoir.com>, <amarantecannes.com>, <amarantechampselysees.com>, <hotelbalzac.com> and <hoteldevigny.com>, each of which referred to a French luxury hotel. The domain names were registered by Respondent, MBI Holdings. The evidence in the case shows that the director of MBI Holdings was also the director of two other entities: JJW Luxury Hotels and Amarante.

The domain names were registered while JJW Luxury Hotels and Amarante still owned the hotels in question. JJW Luxury Hotels owned the Hotel Balzac and the Hotel de Vigny, while Amarante managed the Amarante Champs-Elysées, Amarante Beau Manoir and Amarante Cannes.

The case is complex as it takes place in the context of a takeover between JJW Luxury Hotels and Amarante and Complainants. Several hotels in France had been acquired by the Complainants, including the above-mentioned hotels. Shortly before the UDRP complaint was filed, the three Complainants, members of the same group, had initiated not only a business transfer agreement, but also a trademark assignment agreement with the Respondent. According to the Complainants, the effect of this agreement was to grant full ownership of the trademarks and domain names associated with the aforementioned hotels.

However, Respondent argued that, contrary to the Complainants’ assertion, the transfer of the businesses and associated trademarks had not yet become permanent. In fact, a dispute was pending before the French court. Similarly, it appeared that certain contractual provisions provided for the retention of certain company funds in an escrow account. These provisions therefore suggested that the transfer of assets were not complete, final or irreversible.

Paragraph 4(a) of the UDRP requires three elements to be met in order to claim the transfer of a disputed domain name: similarity of the domain name to a prior right of the Complainant, evidence of the absence of a right or legitimate interest of the domain name’s current holder, and evidence of bad faith registration and use of the domain name by the current holder.

The first element is in default, according to the Expert, who however moderates his statement. The question of ownership of rights is raised, as the Respondent claims that the rights to trademarks and domain names have not yet been validly transferred. The Expert asserts that the evidence provided by the Complainants is not sufficient in order to determine whether the transfer of ownership is actually effective. In fact, Complainants did not provide any information on the ongoing legal proceedings, nor did he mention them in his complaint.

Understandably, the second requirement of paragraph 4(a) is not specifically discussed by the Expert, as it is essentially linked to the first. If Complainants are not able to demonstrate that the transfer of rights has taken place, they cannot prove that the Respondent, who previously held the rights, no longer does so.

Finally, the third requirement also poses a challenge for the Expert. In light of the context, it seems unlikely that the domain names were registered in bad faith, as the Respondent appeared to demonstrate a legitimate registration and use of the five domain names. Again, the lack of evidence does not allow the Panel to conclude that the bad faith test is met.

In summary, the texts are applied strictly and it is quite easy to understand the Expert’s position in this case. The solution could undoubtedly have been quite different if Complainants had communicated about the ongoing legal proceedings and submitted evidence that would have demonstrated the Respondent’s bad faith. According to the Expert, this case is not a classic case of cybersquatting, but rather a concurrent dispute to legal proceedings already underway.

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ICANN: Next round of new gTLDs unlikely to happen before 2023

ICANNOn February 18, 2021, ICANN’s Generic Name Support Organization (gNSO) Board voted to approve the “New Generic Top Level Domain (gTLD) Subsequent Procedures Policy Development Process Final Report.

This Final Report contains certain statements, recommendations, and implementation guidelines, which are defined as “Outputs”. It includes statements about existing policy, recommendations for new policy, and various guidelines on how best to implement it. It addresses some 40 topics that cover all aspects of new gTLD deployment, such as how the deployment should proceed, under what criteria, etc.

On March 24, 2021, this Final Report was transmitted to the ICANN Board of Directors, which must now review the Outputs to determine whether the recommendations are in the best interests of ICANN and its community.

To accomplish this, the Committee requested an “Operational Design Phase (ODP)“, launched in late 2021 and expected to last ten months. It should be transparent to the public and regular reports should be issued . This timeframe could be extended if unforeseen circumstances were to arise.

Therefore, it is very likely that the next round of new gTLDs will be postponed to 2023. All the more so as some of the recommendations raise questions, particularly with regard to the absence of reinforced protection measures against abuse of the Domain Name System (DNS).

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Domain name monitoring remains a major issue

Veille noms de domainesWIPO, Arbitration and Mediation Center, Case No. D2022-0593, April 15th 2022, Photomaton v. Domains By Proxy, LLC / Ehren Schaiberger

In the decision made on April 15th, 2022, Photomaton had its UDRP complaint rejected, that concerned a domain name of which it was previously a holder of.

This case is likely to attract a lot of attention as it illustrates the importance of regular monitoring of domain names and other industrial property rights that are subject to renewal.

The case is concerned with the domain name <photomaton.com>, which, according to the evidence, was held by the company Photomaton from the 16th of January 2015 until January 2020. The situation may seem far-fetched, but it appears that the Complainant did not renew the domain name on time. The Respondent, Mega Domains, is a domainer who registers and puts domain names up for sale. At the time of this case, it held more than 10,000 domain names.

Respondent became the owner of the <photomaton.com> domain name when it expired via a so-called “Drop Catching” system. The logic suggests that the registration was done properly and that the Respondent had nothing to worry about, however the rules of the UDRP procedure are a little more complex.

What about a domainer who registers a domain name with a third party’s trademark that is not registered in the country where the domainer is located?

Complainant argued that it was the owner of French, EU and international trademark “PHOTOMATON” as well as the domain names <photomaton.fr> and <photomaton.be>. Paragraph 4(a) of the UDRP provides that a combination of three elements are required to be met in order to claim the transfer of a disputed domain name: the existence of Complainant’s prior right that is confusingly similar to the domain name, evidence of absence of a right or legitimate interest of the domain name’s current holder and evidence of registration and use in bad faith of the domain name by the current holder.

Obviously, the first condition left no room for doubt for the Expert: the name was identical to the “PHOTOMATON” trademarks held by Complainant, as the gTLD “.com” was not considered in this comparison.

The second condition, on the other hand, was subject to more detailed consideration. Complainant argued that it had not given permission to Respondent to register and use the domain name in question and that Respondent was not known by the domain name or any of its derivatives, nor did it own any trademarks relating to the domain name. The Respondent argued that the term “Photomaton” was a descriptive term that he could register and resell at his convenience.

The Expert, far from stopping at a biased parallel between the English term “photo booth” and the term “photomaton”, affirmed by referring to an INPI decision, stating that the term “photomaton” was not considered descriptive in both English and French. In support of his argument, he added that even if the term had become restrictive, the domain name must be used genuinely, or at least clearly intended for such use, in relation to the dictionary definition and not for the purpose of trading in the trademark rights of others. This was not the case here, as Respondent had offered the domain name for sale on the ‘Dan’ platform for 37,000 US dollars, a price set on the basis of the notoriety of the term.

The third condition was the most controversial and the one that led the Complaint to fail. Complainant claimed that its trademark was an invented word, deemed distinctive by INPI case law, and it is very famous, at least in France, where it has been used for over 100 years. It was therefore unlikely that Respondent had registered the disputed domain name without knowing the Complainant’s trademark.  However, Complainant had not provided any evidence of the use of its brand or its scope in the United States, where Respondent was located.

Meanwhile, Respondent claimed that it did not know Complainant at the time of registration of the disputed domain name. Respondent added that his business consisted of the registration and resale of domain names that he considered descriptive. Respondent also provided evidence of the registration of numerous names containing the word “photo” or ending in “on”.

The Panel reflecting on the facts, concluded that it was clear that Complainant did not abandon its trademark, even if it did not renew the domain name, therefore a subsequent purchaser could not use it in a way that would conflict with its trademark right. The complexity of the case lies in the fact that Respondent argued that more than 100,000 domain names expire every day and that to avoid potential disputes, the latter used keywords that are likely to be rejected for registration, which included many trademarks. However, Respondent claimed to be using the databases of the US Trademark Office, where the mark “PHOTOMATON” was not registered. The Panel responded by stating that by offering the brand for sale on a worldwide scale, based solely on a US database, did not seem adequate in light of the database provided by WIPO.

The Panel concluded that the Complainant’s name was not registered as a trademark highlighting two points: firstly, a Google search made at the time of the registration of the domain name by Respondent did not clearly show Complainant’s trademark, but the geographical points where the photo booths were installed. Secondly, the Expert considered that Respondent had nonetheless undertaken numerous endeavours to ensure that the disputed domain name was not the subject of a trademark right. The Panel noted that failure to use a worldwide trademark database might not be excused in the future.

This is an unforeseen decision, which demonstrates the extent to which management of a domain name portfolio remains a major issue for companies of all sizes. So far, the <photomaton.com> domain name is still for sale on the Dan.com website for 37,000 US dollars.

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Legal Watch : THE UDRP PROCEDURE

CYBERSQUATTINGThe UDRP PROCEDURE is designed to deal with cases of abusive cybersquatting.

Since the implementation of the General Data Protection Regulation and, more generally, when domain names are registered anonymously, it is often difficult to identify the enemy that we intend to strike.

The issue can be solved through filing a UDRP complaint. This is what happened to the US company Capital Distribution Consulting Inc. As the owner of the semi-figurative trademark Royal dragon superior vodka 5X distilled, the company filed a complaint against the anonymously registered domain name <royaldragonvodka.com>.

Once the procedure was initiated, the identity of the registrant was revealed. The latter was a certain Mr. X, who was an officer of Horizons Group (London) in the United Kingdom and the owner of the UK trademark Royal dragon vodka.

 

 

In fact, it turned out that both parties obtained their trademarks through a transfer carried out by Dragon Spirits Limited in Hong Kong, of which Mr. Bharwani was one of the shareholders.
This information gave rise to further exchanges between the parties, each accusing the other of having obtained the trademark unlawfully. In particular, the complainant argued that the transfer to the defendant had taken place after the liquidation of the transferee.

The facts reported in this decision are particularly complex and all-encompassing, which indicates that the UDRP is not the appropriate forum for this kind of litigation.
The expert reported that the complainant filed an additional response, which is not provided for in the Regulation, after the defendant’s response and then a second response 9 days later. This response contained 15 annexes, including a sales agreement, court orders, share transfers, a declaration relating to the liquidation procedure, etc.

The expert decided not to accept this response and consequently not to consider the defendant’s request to reply in case these submissions were accepted.
The expert pointed out that this case does not concern a simple case of cybersquatting but rather a competition matter, involving trademarks being registered around the world.

He noted that trademark rectification proceedings based on competition grounds have been granted or are still pending in different jurisdictions. Therefore, the domain name in question is fully in line with this broader dispute. The expert recalled that the Guiding Principles of the UDRP are not designed to settle all kinds of disputes that would have any link with domain names. On the contrary, the Guidelines establish an inexpensive and streamlined administrative procedure being limited to ‘abusive cybersquatting’ cases.
This decision serves as a reminder that it is essential to obtain as much information as possible about the disputed domain name that forms the subject of a procedure. For relatively old names such as <royaldragonvodka.com> being registered in 2011, valuable information can be found through consulting the Whois history of the domain name.

 

 

WIPO, Arbitration and Mediation Center, Case No. D2021-2871, Nov. 24, 2021, Capital Distribution Holding Inc. v. Hiro Bharwani, Horizons Group (London) Ltd.

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LEGAL WATCH : THE NAME PARISTECH.ORG

The name < PARISTECH.ORG >, operated by Parisian entrepreneurs, would not infringe Paritech’s rights.

At the end of the year 2021, a surprising UDRP decision was issued. It concerned a complaint filed against the domain name < paristech.org > that was registered by an anonymous registrant in 2017. The complaint was filed by the French ParisTech Foundation («ParisTech») who is known for its higher education services primarily in the fields of science and technology,

ParisTech notably owns two French Paristech trademarks, registered in 1999 and 2010 and subsequently renewed, as well as the international trademark “Paris Institute of science and technology Paristech” registered in 2010 and renewed in 2020. It also owns the <paristech.fr> domain name, registered in 2004.
The disputed domain name was used to disseminate French articles on a variety of topics, most of which related to technology and innovation. Before filing a complaint, the complainant attempted to contact the registrant at the address mentioned on its website, but without success.

 

After the complaint had been filed, the defendant indicated that he was open to find an amicable agreement with the complainant. Although it led to the suspension of the proceedings, the negotiations – whereof the content has not been reported – were not successful. Consequently, the proceedings resumed. The defendant submitted a late response to the complaint, which the expert decided not to accept, based on the consideration that it would not have changed the outcome of the case anyway.
In his analysis, the expert acknowledges that the domain name is identical to the complainant’s prior Paristech trademarks.

However, as far as the legitimate interest is concerned, his position may seem unexpected since he decided not to rule on the matter.

He noted that the website included articles on various topics that mostly related to technology and innovation. The site incorporates a «Paris Tech» logo at the top of the page and at the bottom, a reference to the city of Paris and a postal code.

He noted that the «Paristech» website is managed by two Parisian entrepreneurs who want to keep track of technological developments.

The only method of contact is an email address. Nonetheless, the complainant demonstrated that this email address does not work.

The expert further noted that the legal notices only contained the contact details of the OVH host and that the contact details did not correspond to those provided by the registration office.
However, he noted that there is no evidence to suggest that the purpose of the defendant was to target the complainant’s trademark. The “Paris Tech” logo on the site is different from that of the complainant. In addition, the expert stated that the content presented on <paristech.org> and <paristech.fr> are different.

He explained that «Paristech» can easily be understood as “Paris Technology” referring to the content of the site.

Based on these facts, the expert considered that the complainant failed to prove the defendant’s bad faith and referred to his comments on this point.

He considered that the defendant could have known about the Paristech trademark when he registered the domain name since the complainant’s trademark appears to be known in France in connection with its research education services and that the website is operated by Parisian entrepreneurs, where the complainant is based.

Nevertheless, he noted that the site was non-commercial, relating to technology and innovation, and did not refer to the complainant’s field of activity, namely education.

Moreover, the expert noted that the complainant did not provide proof that the registrant had proposed the domain name for sale before the start of the proceedings, nor that he would have obtained a financial gain by making use of this domain name through taking advantage of the risk of confusion. Hence, the domain name registration does not constitute an abusive reproduction of third-party trademarks.

He therefore rejected the complaint, stating that the choice to hide his contact information on the Whois file and to provide on his website a contact email address that does not work is not sufficient to conclude bad faith registration.
This decision may seem surprising given the complainant’s reputation among the French speaking and international public.

The domain name is strictly identical to the earlier trademark and reproduces part of the complainant’s legal name. The website is operated in French. However, the complainant is located in France where it enjoys a certain reputation.

The legitimacy of the site may seem questionable since no legal notice is inserted and the contact address is false. The defendant does not claim trademark rights or a legal name «Paristech».
The website’s topics are similar to those covered by ParisTech. The fact of not drawing active income or not actively proposing the sale of the domain name does not mean that the defendant did not intend to target the complainant’s trademark. We note that as of December 30, 2021, the site is inactive.

By consulting the history of the Whois of the disputed domain name, we can see that on February 12, 2017, the name was held by Mr. X, ParisTech company. According to our research, the latter was the general manager of ParisTech. Subsequently, the name became anonymous. Therefore, there appears to be a very clear link between the complainant and this domain name.

Finally, although the articles promoted on the site do not focus on education, it could be argued that the dissemination of informative articles can be related to it.

It appears that the expert based his decision primarily on the lack of commercial intent in the use of the disputed domain name.

However, the expert noted that if the content of the website were to change in order to infringe the complainant’ rights, then the complainant would be free to pursue legal action.

 

WIPO, Arbitration and Mediation Center, Case No. D2021-2417, October 28, 2021, Paristech Foundation v. Domain Administrator d/b/a privacy.cloudns.net

 

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