For the first time ever, you can see a “live” demonstration of how an actual UDRP domain name dispute case is argued and adjudicated. The ICA is very pleased to present in association with the International Trademark Association (INTA) a “moot” or “mock” UDRP hearing. This innovative and lively session will feature three actual UDRP Panelists as they hear a fictional UDRP case influenced by real-world facts. The case will be presented by experienced lawyers making arguments for the trademark owner and for the domain name registrant, respectively. Read the interesting “fictional” facts of the case, here. The case involves a famous Thailand-based energy drink company called, “Red Ball”, and a domain name investor from Iowa, Connie Domainus in a dispute over the fictional domani name Red Ball dot com. Was the domain name registered and used in bad faith to target the Complainant? Or did the registrant register the Domain Name because it had inherent value as corresponding to a descriptive term? Now you don’t need to just read about a case after it happens, you can see it argued and decided in real time!
The ICA and INTA have put together a dream team of counsel and panelists: George Nahitchevansky as Complainant Counsel, Karen Bernstein as Respondent Counsel, and Gerald Levine, Steve Levy, and Francine Tan (Chair), serving as Panelists. Lori Schulman from INTA and Zak Muscovitch and Kamila Sekiewicz of ICA will both be making brief remarks at the beginning of the session.
Here is a little promo reel to give you a taste of the session: https://www.youtube.com/watch?v=ze1RyANN2aY.
You can still get a Namescon Online ticket, here: https://namescon.online/pass
Red Bull in a China Shop
<redbullbeijing .com> and others
Transfer (with dissenting opinion)
Panelist: Mr. Matthew Kennedy (Presiding), Mr. Joseph Simone and Dr. Hong Xue (Dissenting)
Brief Facts: The Thai Complainant sells energy drinks including RED BULL. The Complainant entered into joint venture and trademark licensing agreements with Red Bull Vitamin Drink Co. Ltd, the purpose of which was the introduction of the Red Bull vitamin drink to China. A trademark ownership dispute arose between Red Bull Vitamin Drink Co., Ltd and the Complainant, in which the former claimed ownership of the RED BULL trademarks in China. The trademark ownership claim was dismissed by a Beijing court. The Respondent claims to have registered the domain names in the course of employment with the Respondent Company and that the beneficial owner, Red Bull Vitamin Drink Co., Ltd, uses the domain names in connection with its valid and subsisting licensing agreement.
Held (majority view): The Respondent failed to prove that she was and continues to be an employee of Red Bull Vitamin Drink Co. Ltd. The Respondent failed to substantiate her claim that Red Bull Vitamin Drink Co., Ltd has the exclusive right to use the RED BULL trademarks in mainland China. The Supreme People’s Court of China previously declined to accept the authenticity of the purported 50-year license agreement for the RED BULL. The Complainant has made a prima facie case that the Respondent has no rights or legitimate interests in respect of the disputed Domain Names. The Respondent targeted the Complainant’s trademarks when she acquired the disputed Domain Names and registered them in bad faith.
Dissenting opinion: There is insufficient evidence to conclude that the Respondent had not been the employee of Red Bull Vitamin Drink Co. Ltd since acquiring the disputed Domain Names or that the purported license agreement was inauthentic. The court decision referenced by the majority decided the ownership of the RED BULL trademarks in China but the authenticity of the purported licensing agreement was not conclusively determined. The Parties’ complicated dispute regarding the 50-year licensing agreement (especially the new evidence) is more appropriately resolved through a full trial in other legal proceeding than in an expedited administrative case.
Complainant’s Counsel: Internally represented
Respondent’s Counsel: Han Kun Law Offices, China
Buttkicker Gets Butt Kicked
Complaint Denied (RDNH)
Panelist: Mr. Michael A. Albert
Brief Facts: Complainant is in the business of consumer electronics and apparel. Complainant has rights in the BUTTKICKER mark through its registration with the USPTO since 2003. Respondent registered the disputed Domain Name on Sept. 30, 1996 and planned to use the domain name in connection with a smoking cessation program developed by Respondent’s father, wherein word “butt” can refer to a cigarette butt, while “kicker” refers to the common phrase of quitting smoking by “kicking” the habit. Currently, the disputed Domain Name has been passively held.
Held: Respondent provided multiple documents as evidence in support of the smoking cessation program, including an expired USPTO application and online description of the program/device. Therefore, the Respondent has rights and legitimate interests in the disputed Domain Name under Policy. Also the Respondent’s registration of the disputed Domain Name predates Complainant’s first claimed rights in the BUTTKICKER mark. In such circumstances, the Complainant cannot prove registration in bad faith in terms of the Policy.
RDNH: The Complainant knew or should have known that it was unable to prove either that Respondent lacks rights or legitimate interests in the <buttkicker .com> Domain Name or that Respondent registered and is using the disputed Domain Name in bad faith. The most glaring evidence for this conclusion is that the Domain Name was registered a decade before Complainant’s trademark rights came into existence. It is logically impossible for the registration to have been made with the intent to infringe on trademark rights that did not yet exist. Accordingly, the Panel finds that reverse domain name hijacking has occurred.
Complainant’s Counsel: Internally Represented
Respondent’s Counsel: Roberto Ledesma of Lewis & Lin, LLC, New York, USA
Turkish Car Company’s Complaint Not Up to Speed
Complaint Denied (RDNH)
Panelist: Mr. Matthew Kennedy
Brief facts: The Complainant is a Turkish company founded on June 28, 2018 for the purpose of producing automobiles. The Complainant holds multiple trademark registrations in Turkey and the European Union containing the element TOGG. “TOGG” is an acronym formed by the initials of the first four words in the Complainant’s company name – TÜRKIYE’NIN OTOMOBILI GIRIŞIM GRUBU. The Complainant currently uses <togg .com.tr>, where it provides information about itself and its planned automobiles. The disputed Domain Name has a registration date of January 2003. The Complainant purported to withdraw the Complaint after the commencement of the proceeding but the Respondent objected to the withdrawal.
Held: The Panel declined to terminate the proceeding. Termination would leave the Complainant free to refile a complaint, whereas continuing will give the Respondent an opportunity to obtain findings on the merits of the Complaint. The disputed Domain Name was acquired by the Respondent in 2014, five years before Complainant obtained its earliest trademark registrations. Obviously, the Respondent could not possibly have had the Complainant or its marks in mind in 2014 when it acquired the disputed Domain Name.
RDNH: The Complainant was represented by legal counsel. The Complaint specified the creation date of the disputed Domain Name, which was 16 years before the earliest registrations of the Complainant’s trademarks in March 2019. The Complainant at best launched this proceeding without addressing the critical issue in the case and knowing that it could not succeed in its Complaint under any reasonable interpretation of the Policy. Therefore, the Panel declared that the Complaint was brought in bad faith and constituted an abuse of the administrative proceeding.
Complainant’s Counsel: Gün + Partners, Turkey
Respondent’s Counsel: John Berryhill, Ph.d., Esq., United States
Don’t Confuse Your B&B with Your BNB, or AirBNB
Panelist: Mr. Blackmer, W. Scott
Brief Facts: The French Complainant operates hotels & restaurants, has a portfolio of more than 500 hotels in France, Germany, Italy, Spain, Portugal, Belgium, Switzerland, Poland, Austria, Slovenia, the Czech Republic, and Brazil. The Complainant holds multiple trademark registrations for B&B Hotels and similar marks since 1990 and operates online through multiple domain names, including <hotel-bb .com> (1998), <hotel-bb .tm.fr> (1998), and <hotel-bb .fr> (2000). The disputed Domain Name was created on July 26, 2001 by a U.K. resident, who has parked the domain name at DAN .com for sale, with a minimum offer of GBP 4,997.
Held: The disputed Domain Name is composed of the English dictionary word “hotel” and the string “bnb”, a variation of the common acronym “b&b”, which stands for “bed and breakfast”. Those words are very common on Internet travel websites. The less distinctive the mark, the harder it is to establish the likelihood that a similar, descriptive domain name was chosen for its trademark rather than dictionary value. The problem is that the textual elements of those marks are dictionary words or acronyms that are very commonly used, and the Complainant is neither globally known nor uniquely associated in the travel industry with hotels and bed and breakfasts. The Respondent’s intention of selling the Domain Name is not in itself proof of bad faith and no indication that the Respondent is a competitor or serial cybersquatter. Therefore, no Bad Faith is proved against the Respondent.
Complainant’s Counsel: Fiducial Legal By Lamy, France
Respondent’s Counsel: Self-Represented
UDRP Lights On, But Nobody Home
Panelist: Mr. David E. Sorkin
Brief Facts: Complainant was founded in 1917 as Wisconsin Power and Light Company, but later the name changed to Alliant Energy Corp. The Complainant claimed as having expended significant sums of money and substantial effort promoting and advertising its goods and services under the WISCONSIN POWER AND LIGHT COMPANY mark. The members of the public throughout Wisconsin and Iowa “continue to associate” the mark with the Complainant and its goods and services. Complainant alleges the Respondent has used the disputed Domain Name, without any authorisation or licence for a website in Complainant’s name, presumably in support of Respondent’s fraudulent scheme.
Held: Complainant does not own any Trademark rights in the name, therefore, relying on unregistered or common law rights in the mark. Based on the manner in which Complainant has used and claimed public recognition of its mark, it appears that Complainant no longer uses that mark in a trademark or even a trade name sense, having shifted to ALLIANT ENERGY, more than twenty years ago. Therefore, the Complainant has not proved that it has the rights in a relevant mark in terms of the first clause of the Policy. The Panel reaches this conclusion reluctantly, as it appears fairly clear that Respondent lacks rights or legitimate interests in the disputed Domain Name and that Respondent registered and is using the domain name in bad faith.
Complainant’s Counsel: Thomas L. Holt of Perkins Coie LLP, Illinois, USA
Respondent’s Counsel: No Response
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Complaint Denied with RDNH ruling
Panelist: Mr. Luca Barbero (Presiding), Ms. Emmanuelle Ragot and Mr. Andrew D. S. Lothian
Brief Facts: Complainant is a French law firm originally formed in 2006. There have been changes in the constitution of the firm but the name, ‘LERINS’ has consistently been used. The Complainant obtained a 2007 LERINS trademark registration via a transfer agreement on December 08, 2020. Respondent is GoDaddy’s subsidiary dealing in purchasing and offering for sale, domain names composed of generic terms. The domain name was acquired by Respondent in December 18, 2020 for its intrinsic value, as the word “Lerins” also corresponds to a French or Scottish family name.
Held: Complainant failed to make a prima facie case that the Respondent lacks rights or legitimate interests in the disputed domain name as it did not demonstrate that the Respondent intended to target the Complainant’s trademark. Further, the Respondent demonstrated it has a legitimate interest in the disputed domain name since it registered the disputed domain name for investment purposes due to its own intrinsic value as a surname and was thereby of potential interest to several third parties. The three member panel concluded that the Complainant’s action in bringing these proceedings constituted Reverse Domain Name Hijacking. The Complainant’s case was based on the argument that offering a disputed domain name for sale for an amount exceeding the related out-of-pocket costs, independently of any awareness of the Complainant and its trademark. The Complainant should have contemplated that it could not succeed with such an argument. The circumstances of the case clearly show that this was a speculative case brought by the Complainant after its failure to purchase the disputed domain name from the Respondent’s predecessor in title.
Panelist: Mr. Mathew Kennedy
Brief Facts: The Complainant is an American design studio that launched its first product, a table lamp under the TRUEING brand, in October 2016. The product was promoted in design magazines including in Chinese publications from November 2016 to January 2017. The domain name was registered on February 20, 2017 following its expiry and a public auction. The Complainant registered the TRUEING trademark on July 31, 2018 in the USA claiming first use in commerce since November 20, 2016. The Chinese Respondent denied that the mark was known in China and denied that he was aware of the mark when he registered the domain name. His claimed intention was to use the disputed domain name which corresponds to an English dictionary word, in connection with a food website. The domain resolved to a landing page advertising the disputed domain name for sale. The Complainant made several offers to purchase the domain name prior to commencing the proceeding.
Held: The disputed domain name is identical to the trademark which corresponds to a dictionary word, albeit an uncommon word. The Complainant launched its first product with the TRUEING mark as reported in Chineses magazines prior to the registration of the disputed domain name. The relatively short period between the appearance of these publications and the registration of the disputed domain name “did not appear coincidental”. The Respondent provided no plausible explanation for his choice of the disputed domain name despite “trueing” being a dictionary word. The Panel found it “more likely than not” that the Respondent registered the disputed domain name in bad faith in anticipation of the Complainant’s rights in the TRUEING mark rather than because it corresponded to a dictionary word. Domain transfer ordered.
Blackhawk Network, Inc. v. 1337 Services LLC, Robert Mkhitarian, Proxy Protection LLC, Lilith Brown, Withheld for Privacy efh, Lilit Dagie, Mike Twin, Adam Adamyan, Jensen Mars, Took Herassa, John Adamyan, The Perfect Gift Services LLC, Robert Smith, Roger Vance, Mario Velez, Juan Vanailita, Lamino Piking, Divine Design, Bella Tovmas, WIPO Case No. D2021-1611
>>heperfectgift.com<< and 22 more [27 Disputed Domain Names]
Panelist: Mr. Ian Lowe
Brief Facts: Since 1999, the Complainant has been in the gift card business and began selling gift cards in grocery stores in 2001. It now provides a range of branded payment programs in 28 countries using physical gift cards, as well as online, in digital wallets and via social media, and by smartphone apps. In connection with the provision of its various services, the Complainant has used the mark, GIFT CARD MALL since 1999, the mark THE PERFECT GIFT since 2006, and the mark, MY PREPAID CENTER since 2011. 26 of 27 disputed domain names were registered recently. The Complaint was filed against multiple named Respondents and was accepted by the Panel based upon evidence of “common control” by the single person.
Held: The Panel is satisfied on the balance of probabilities that all the disputed domain names are under common control and that the Complaint may be consolidated, in particular, all the disputed domain names target the three trademarks and the Complainant has pointed to the content of the webpages, to the identity or similarity between registrants and/or their contact details, adduced detailed technical analysis of the IP address, redirection between linked disputed domain names and of the commonality of the Google Analytics Tracking ID of a number of the disputed domain names. The Complainant was able to satisfy all three elements of the UDRP and the domain names were ordered transferred.
Bella Belle LLC v. Brigitte Braun / Whoisprotection.cc / Domain Admin / Anne WEBER, NAF Claim Number: FA2107001954879
Split decision >>bbshoesforsale.com<< not transferred
Panelist: Mr. Debrett G. Lyons
Brief Facts: Complainant sells footwear under the trademark, ‘BELLA BELLE’, registered with the USPTO since March 28, 2017. The Respondent registered the domain names during March-April 2021 with different WHOIS profiles. The domain names resolved to essentially identical websites advertising footwear under the Complainant’s trademark. The Complainant alleged that the domain names were effectively controlled by a single person or entity operating under several aliases, and accordingly brought a single Complaint.
Held: The Panel did not accept that <bbshoesforsale.com> is confusingly similar to the trademark. The letters “bb” themselves are not enough to connote the trademark in the absence of better evidence, such as use of those letters and common law trademark rights in them. Therefore the Complaint was denied as to <bbshoesforsale.com>. The resolving web pages for the other two domain names show ladies footwear for sale under the Complainant’s registered trademark which is not a bona fide offering of goods or services, legitimate fair use under the Policy. The other two domain names incorporating trademark were ordered to be transferred.
Panelist: Mr. Luca Barbero
Brief Facts: The Complainant is a French company founded in 2000 specializing in high-end camping villages located in France, Spain, and Portugal. It owns the EU Trademark for YELLOH registered on February 28, 2014 and also owns the domain names <yellohvillage.fr> and <yellohvillagepro.com>. The disputed domain name, <yellohconsultancy.com> was registered on May 3, 2021 and was pointed to the parking page of the concerned Registrar. Previously, the disputed domain resolved to a pay-per-click (“PPC”) web page with sponsored links related to the Complainant’s field of activity. The Respondent stated that he purchased the disputed domain name because he is the owner of a marketing consulting and consultancy company called “YellOh! Consultancy”. He also claimed that he registered the disputed domain name in order to link it to his existing domain name <yell-oh.co>, indicating that he is also the owner of the domain name <yellohconsultancy.de>.
Held: The Respondent appears to have been operating mainly in the consulting field in Germany and Arab United Emirates and provided a plausible explanation about its reason for its selection of the sign “YellOh! Consultancy”. The Respondent also used a logo which differed from the Complainant’s trademark, YELLOH. The Respondent may not have got its website set up properly at the time of filing the complaint. The record supported that the Respondent came with the name independently of the Complainant’s trademark and has been using the disputed domain name in connection with an apparent bona fide offering of its services. Complaint Denied.
Panelist: Mr. Ike Ehiribe
Brief Facts: U.K. Govt’s HM Revenue & Customs department, established in 2005, is responsible for the collection of taxes, the payment of some forms of state support and the administration of other regulatory regimes. The Complainant is the registered proprietor of United Kingdom trade marks, HMRC (2008) and HM REVENUE & CUSTOMS (2017). The Complainant also operates a website within the United Kingdom Government’s official portal at “www.gov.uk” and can also be accessed at <hmrc.gov.uk>. The Disputed Domain Name <taxrebateform-hmrcuk.com> was registered on February 14, 2021. The website associated with the disputed domain name resolves to a registrar’s parking page featuring several advertisements.
Held: When a domain name incorporates a complainant’s mark in its entirety it is confusingly similar to that mark despite the additions of other words. The totality of the evidence adduced by the Complainant demonstrates that at the time the Complaint was filed, the disputed domain name’s website resolved to the parking page featuring several advertisements and in addition the disputed domain name had been flagged by at least two reputable third parties as having been used for phishing or other criminal activity. The Panel finds that such conduct by the Respondent cannot be described as legitimate noncommercial or fair use activity within the Policy. Domain transfer ordered.
We were delighted to host a panel of new gTLD experts who shared their expertise and predictions for the next round of the new gTLD application process in a webinar earlier this week. The ICA would like to extend a big thank you to our wonderful host, Christa Taylor, and the panelists, Jeff Neuman, Jothan Frakes, and Phill Buckingham. You’ll find more information on our speakers in our previous post.
If you missed the webinar, we are making a recording of it available for everyone to watch here
The Internet Commerce Association has so far welcomed over 150 registered attendees to its free business intelligence briefing on the next round of the new gTLD program, which will take place via Zoom, tomorrow, August 4, 2021 at 1 pm ET.
Whether you are a fan or not of new gTLDs it may be a good idea for you to keep abreast of what is happening in the industry. Please join our expert panel of Jeffrey Neuman, Phil Buckingham, Jothan Frakes, moderated by new gTLD expert Christa Taylor who will give you the latest news and insights into the anticipated next round of applications. You can register for free here: https://us02web.zoom.us/webinar/register/WN_TlFfugLiSAq__34EsbZhJA
Some of the trickiest issues with domain names involve determining their proper tax treatment. Are domain name purchases held in inventory, expensed, or amortized? If amortized, for how long? How can one appraise a donated domain name? What do you do if you purchase a domain name and a website is included?
The ICA is very happy to announce that Ed Neff will be leading our July Member Event and sharing his expertise on these matters with ICA members. Ed Neff has been a principal with Taksey Neff & Associates since 2005. As a tax partner, he has over twenty years of tax and accounting experience working with a broad range of clients in the Washington, DC metropolitan area. Ed has many years of experience handling tax issues for leading domain name investors and is well-versed in the complexities of domain name tax regulations. You’re invited to take part in this valuable opportunity to hear from and interact with an expert in the field of domain name taxation!
Domain name investors look for security and portability amongst other important factors when selecting a registrar. Locks can sometimes play an important role in securing a valuable domain name. When a registrar locks a domain name upon changing a registrant or changing registrars that may give the registrant time to notice an unauthorized change and better enable the registrar to assist in recovering the domain name, for example via the Registrar Transfer Dispute Resolution Policy. Locking a domain name may also assist a registrar in ensuring that it gets paid for the domain name prior to it being transferred to another registrar.
Nevertheless, locks are not the only kind of security available to registrars and registrants. Security measures such two-factor authentication (2FA) can be implemented by registrars in order to avoid unauthorized transfers of domain names in the first place and have been proven to be very effective in avoiding domain name theft.
Where locks are imposed as a security mechanism it is important for registrars and registrants alike to be aware of when and why a domain name may be locked. In consulting with many registrars and registrants, the ICA discovered that there are widespread misconceptions about who requires locks and when they are mandatory. From a careful review of ICANN’s Transfer Policy – which is a very confusing document even for experienced lawyers to comprehend – it is apparent that some registrars themselves are unclear on when they are required to impose a lock and when they are not. Similarly, many registrants are unaware that ICANN policy is generally permissive when it comes to imposing locks – leaving it to the discretion of the registrar in many cases. Below is an infographic which the ICA prepared to help clarify what ICANN’s transfer policy says about transfer locks:
From a domain name investor perspective, security must be balanced with portability of domain names. However in order for registrants to ascertain what balance between security and portability is available from particular registrars, greater transparency and education is required. The ICANN Transfer Policy Working Group is currently engaged in reviewing the Transfer Policy, and making the Transfer Policy clearer and determining when transfer locks may appropriately be imposed, are two of the many issues that will be carefully examined. Further information about the Transfer Policy may be found here. The Internet Commerce Association is committed to working towards a more transparent and readily ascertainable transfer policy applicable to all registrars so as to enable domain name investors and all registrants to make informed choices when selecting a registrar. Below is a chart showing the transfer policies for two ICA-affiliated registrars and you can see Dynadot’s recent blog post clarifying their locks here
ICA turns 15 this fall, and we’re thrilled to announce that we hope to be celebrating in… Las Vegas! It was a very close vote, but ultimately, you, our members, decided that you’d like for our first in-person event to happen in Las Vegas. With so many meetings held there in the past, it’ll be fun to reminisce about them as we create new memories.
We envision a fun event combining some member meetings and social activities. There will be no admission costs; meals and drinks will be covered by members and we will offer sponsorship opportunities to host cocktail hours, breakfasts, and dinners.
We are looking forward to meeting in person, and we’re confident things in the U.S. will continue to improve. Still, we will monitor the situation to ensure we can provide a safe setting for our meeting and abide by CDC guidelines.
The event is open to ICA members only, and we encourage all members of the domain name industry to join the ICA.
On Monday, March 22, 2021, Nominet, the United Kingdom’s registry operator for .UK domain names faces a stark choice between those who want it to remain true to its original purpose as a not-for-profit singularly focussed on efficiently and cost-effectively delivering domain name registry services for the .UK namespace and those that have more ambitious plans for the registry – which have to-date, involved substantial price increases on .UK registrants in order to fund new ventures. For example, one of these new ventures was investing in autonomous vehicles – something that is wholly outside of Nominet’s mission.
The Internet Commerce Association advocates for the rights and interests of domain name registrants. As a general principle, the ICA’s position is that a registry should prioritize providing registry services at cost or close to it. Anything beyond that unnecessarily imposes excessive fees on registrants. Concerning increases in management remuneration, reportedly increasing by 70% over five years, further demonstrates an organization that is straying from its core mission of operating as a modest not-for-profit without any ambitions beyond managing the .UK namespace.
Although the ICA takes no specific position on the resolutions before Nominet members, the ICA does believe that the current management’s track record of raising prices on registrants without any justification tied to the actual cost of performing the services requires a fundamental change in approach. The current Nominet management has undertaken to freeze .UK domain name prices for two years, but this in our view is entirely insufficient.
The ICA urges Nominet members to support efforts to restore Nominet’s core mission to operate the registry at cost as a not-for profit. Nominet’s management should never raise registration fees beyond what it takes to operate the registry in a prudent manner, with any excess revenue being directed to worthy causes and not to growing the breadth of Nominet’s limited mandate.
Voting by Nominet members ends Friday, March 19, 2021 at 5 pm London time