DECISIONS & NEWS
The following are the decisions that have been previously made in relation to the Channel Islands Registry registered domain names
Caselaw worth a second glance
(If you thing we’ve missed something – contact us at disputedly @ gmail.co.uk
BT v One in a Million
(followed in Yoyo email v RBC Bank 2015 EWHC 3509)
Calls for more teeth to RDNH
The high water mark of reverse domain name hijacking findings is demonstrated in the recent case of IUNO Advokatpartnerselskab v Croom (Case D2011-0806). Some commentators have suggested that a finding of reverse domain name hijacking means little more than the panel slapping a complainant’s hand and saying “bad boy” whilst others have suggested that reverse domain name hijacking procedures should be given more teeth – for example, by imposing a costs penalty on the complainant (as the CIDD procedure has powerr to do) or, as under Nominet (.uk) preventing a complainant from using the Domain Dispute procedure for a specified time once several findings of reverse domain name hijacking have been made against it, but some commentators are saying that the high number of RDNH findings need a proper financial penalty.
Fortinet loses trademark dispute with rival Fortanix
A US federal court jury has rejected cybersecurity firm Fortinet’s claims that rival Fortanix Inc infringed its trademark. Fortinet, which creates firewalls, antivirus software and other cybersecurity products, sued Fortanix, a data security provider, in 2020, claiming that its company name was “highly similar in appearance and in sound” and therefore likely to cause consumer confusion.
However, after a nearly two-week trial, the jury was unsatisfied that trademark infringement had been shown. Fortanix had argued that the variation in approach and technology that the two companies offer and the level of scrutiny that “sophisticated IP professionals” apply to these cybersecurity options before purchasing them made consumer confusion unlikely.
Proposal to block and lock illegal pharmacy domains
new report by the National Association of Boards of Pharmacy (NABP), sponsored by ASOP Global Foundation, has demonstrated how locking and suspending websites that illegally sell prescription medications online directly impacts patient safety. “Disrupting Illegal Online Pharmacies: Lock-and-Suspend as a Tool to Protect Patients”.
The owner of figurative marks containing the term ‘NLix’ sought the transfer of ‘nlix.net’ under the UDRP. The panel found it more likely than not that the domain name was originally registered before 2001, when the complainant filed its trademark. The panel was not of the opinion that the complaint should never have been made and thus declined to make a finding of RDNH.
Appfollow.fi Oy sought the transfer of the domain name ‘appfollow.com’ under the UDRP. With regard to the first limb, the complainant submitted that it owned a Finnish trademark registration for the mark APPFOLLOW dating from May 2021. The complainant also claimed rights in this term as an unregistered trademark.
The disputed domain name, ‘appfollow.com’, was registered in February 2017 and used to point to various websites. Until 2020 it pointed to a registrar parking page or to a page indicating that the domain name was for sale. Starting from January 2020, the domain name resolved to a website promoting the ‘App Annie’ service (one of the complainant’s supposed competitors), as well as to a website containing articles about various applications and topics.The complainant asserted that the disputed domain name had been registered in 2017 in bad faith. The complainant argued that its business, conducted at first via the matching domain name ‘appfollow.ru’, had already started in 2014. A year later, the complainant registered and started to use the domain name ‘appfollow.io’ and created a Twitter account. The complainant also submitted its results associated with Google AdWords between 2016 and 2021 and with its advertising through QuoraAds. The complainant’s sales revenues, as well as use of the term ‘Appfollow’ before 2017, were limited to the Russian Federation and were not substantial.The scale of the complainant’s use of the term ‘Appfollow’ when the domain name was registered was insufficient to reject the respondent’s denial of awareness of the complainant’s unregistered trademark.
The panel decided not to make a finding of RDNH as the complaint was not necessarily bound to fail.
NB: Having a trademark does not necessarily mean that a trademark holder will succeed in obtaining the transfer of a domain name, even if it is identical, especially wherre a domain name has descriptive or generric connotations. Having matching domain names under different extensions will not automatically allow a complainant to claim rights to similar domain names.
Transferring a parody domain name? Never ever!
A WIPO UDRP Panel efused to transfer the domain name ‘nevereverfx.com’, finding that the complainant had failed to prove that the respondent had no rights or legitimate interests and that the respondent had registered and used the domain name in bad faith.
ICC Intercertus Capital Ltd, an international online broker, provides access to tradable instruments for both retail and institutional investors and has trademarks for EVERFX, including EU trademark No 017995046, and was the owner of the domain name ‘everfx.com’.
It complained about the Respondent registering the domain name ‘nevereverfx.com’ on 24 March 2021. At the time of the proceedings, the domain name resolved to a website warning consumers against using the complainant’s services and included a parodied copy of the complainant’s logo.
The panel found that the respondent had successfully passed the “impersonation test”, which addressed the question of whether a domain name would be mistakenly perceived by the public as being authorised by, or affiliated with, the trademark holder. It iis an essential part of parody that the parodying party calls into the mind of the reader the thing benig parodied. The panel found that the addition of the term ‘never’ to the complainant’s trademark created a blended term which was likely to be considered derogatory, such that potential customers were unlikely to perceive the domain name as being affiliated with, or authorised by, the complainant, and served as a sufficient indication that the website at the domain name was critical of the complainant. Moreover, the panel found that the criticism expressed by the respondent seemed genuine and non-commercial and, as such, could not be interpreted as a pretext for cybersquatting or tarnishment of the complainant’s trademark. The panel therefore found that the complainant had failed to carry its burden under the second element of Paragraph 4(a) of the UDRP. The respondent appeared to be engaged in genuine non-commercial criticism in good faith and if this damaged the complainant’s reputation and disrupted its business, it was within legitimate use.
Comment: This decision provides a good example of how the UDRP offers a safe harbour protecting freedom of expression.
An unstreamlined complaint
The complainant was GSL Networks Pty Ltd, from Australia, represented by a law firm. According to limited factual research into public records conducted by the panel, the complainant appeared to have been incorporated on 4 August 2017. The complainant claimed (but evidence was not provided) that it had used the name Streamline Servers or variants thereof across various businesses since 2009. The complainant added that it had purchased the domain name ‘streamline.net.nz’ in November 2009 and that such domain name was still active and registered to the complainant. Since the complainant did not exist then, the panel was prepared to assume that an affiliate or predecessor of the complainant was the registrant of the domain name.The complainant was the owner of the Australian figurative mark S STREAMLINE SERVERS, registered in March 2020, and a US trademark for the word-and-design mark STREAMLINE SERVERS, registered in December 2020 and claiming first use in commerce in April 2016.
The respondent was Alex Alvanos of Bobservers, located in the United States. He created and registered the domain name in June 2004. The domain name resolved to an unconfigured server page. The complainant however provided a screenshot, taken in April 2021, indicating that the domain name, at one time, redirected to a website at ‘www.gameservers.com’, which the complainant stated was one of its competitors. The respondent also provided screenshots from the internet archive service Wayback Machine demonstrating that, in 2004, 2005 and 2010, he had operated a game server hosting business from the disputed domain name.The respondent argued that he had registered the domain name because it contained the two dictionary words ‘streamline’ and ‘server’, which corresponded to his interest in developing a website and business that facilitated owning a server for gamers. The respondent added that the complainant’s trademark did not exist at that time and that a respondent was not required to make use of a domain name in order to have rights or legitimate interests therein. The fact that the domain name described the respondent’s purpose was only further strong evidence of his intent to use it for a bona fide purpose. The respondent specified that he had actually used the domain name for such purpose.
The panel held that the complainant had failed to prove that the respondent had registered or used the domain name in bad faith. Based on the evidence presented, the panel confirmed the respondent’s argument that the domain name had been registered by the respondent before the complainant’s trademark rights accrued and absent any nascent or unregistered rights of the complainant. The panel also held that there was no suggestion or evidence on the present record that, in registering the domain name in 2004, the respondent was anticipating and intending to target any then-nascent rights of the complainant.
The panel found that the complainant had indeed engaged in RDNH because the complaint was doomed to fail at the outset and the complainant, especially if it was represented by legal counsel, should have appreciated this.
The panel further noted that the complainant should have considered the fact that the distinctiveness of its trademark was due in part to its stylisation, and that the domain name contained dictionary words which were at least partially descriptive of a hosting business. The fact that the word ‘servers’ was disclaimed in the complainant’s US trademark registration raised the reasonable possibility that another entity might have come by the term ‘streamline servers’ on an independent basis, and without necessarily having any knowledge of, or intent to target, the complainant or its rights.
RECENT SALES – Fall 2022:
$119,911 sale of Sino.xyz paid by buyer, the Sino Group, is a property developer in Hong Kong that already owns Sino.com. Fiduciary.com at $84,999 in a sale made through NameJet. .Coms took the next two spots as well, with Sedo moving #3 Fincas.com for $74,250 and #4 TouchWallet.com going for $65,000.