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WIPO cases reached a new record in 2022
The World Intellectual Property Organization (WIPO) has recently published its latest statistics for 2022. They show that the number of domain name dispute cases continues to increase, year after year, reaching a new record last year.
As Anchovy News readers will know, the WIPO Arbitration and Mediation Center began offering domain name dispute resolution services under the Uniform Domain Name Dispute Resolution Policy (UDRP) in December 1999. The UDRP, which remains the preferred choice for trade mark owners when it comes to enforcing their rights online, is applicable to domain name registrations in all generic Top-Level Domains (gTLDs) as well as in 42 country code Top-Level Domains (ccTLDs) such as Anguilla (.AI), Colombia (.CO), Micronesia (.FM), Montenegro (.ME) or Tuvalu (.TV). The WIPO Center also provides dispute resolution services for another 39 ccTLDs which have adopted a variation of the UDRP, for example Brazil (.BR), China (.CN), the European Union (.EU), France (.FR) or Spain (.ES).
In 2022, a total of 5,764 cases were filed with WIPO, which is an increase of 12.4% compared to 2021, and double the number of ten years ago. The cases in 2022 represented 9,591 domain names (about 90% of which were gTLDs), as opposed to 8,773 the previous year. Not all complaints are successful, indeed in 2022 about 94.5% of them resulted in a transfer, about 4% resulted in the complaint being denied, and 1.5% were cancelled. It is also interesting to note that, taking all years together, the country where most Respondents are based is the United States (about 29% of all Respondents). China comes in second (about 12%), followed by the United Kingdom (about 6.5%).
The total number of domain names dealt with by WIPO since it started providing the UDRP has now surpassed 111,000. As cybersquatting continues to grow and brand owners keep fighting to protect their rights, this number will undoubtedly increase substantially over the coming months. At the time of writing, 451 complaints (for 735 domain names) have already been filed before WIPO in 2023, bringing the total of complaints since 1999 to 61,884.
As a reminder, WIPO’s statistics are not indicative of the true extent of trade mark-abusive registrations in the Domain Name System as WIPO is not the only dispute resolution service provider for the UDRP – for example FORUM and the Czech Arbitration Court are also UDRP service providers. In addition, while many ccTLDs have adopted “UDRP-like” systems, certain ccTLD Registries have not adopted any alternative dispute resolution system, therefore for these countries, national courts effectively remain the only enforcement option.
For more information on our domain name dispute resolution services, please contact David Taylor or Jane Seager.
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New gTLDs on the up in China
In December 2022, the China Internet Network Information Center (CNNIC) published the English translation of its 50th Statistical Report on China’s Internet Development. The Report, which is updated by CNNIC every six months since 1998, this time detailed a sharp drop in the number of .CN registrations and a concurrent rise in the name of new generic Top-Level Domain (gTLD) registrations in the period between December 2021 and June 2022.
In its initial overview of the Core Data, the Report details that the number of “netizens” in China reached 1.05 billion in June 2022, a figure that represents a 74.4% market penetration, with 99.6% of users accessing the Internet via a mobile phone.
The Report records the total number of Chinese-registered domain names in China in June 2022 at 33.8 million, but notes that the numbers of .CN domain name registrations dropped from 20,410,139 in December 2021 to 17,861,269 in June 2022.
While the .CN extension appears to be losing its shine with Chinese registrants, the appeal of the new gTLDs appears to be mounting, with 4,590,705 domain names being registered up to June 2022, which is 13.6% of all registrations and almost a million more than December 2021’s figure of 3,615,751.
While this figure creeps towards the total number of .COM domain names registered by Chinese registrants (10,093,729), the .COM gTLD is itself suffering a decline in China, despite being the gTLD with the highest number of Chinese registrants, having lost around half a million domain names in China in the December 2021 to June 2022 period.
It will be interesting to see if this shift towards the new gTLDs and away from the legacy gTLDs and .CN continues in the future.
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Changes at .NL Registry
The Registry responsible for running the country code Top-Level Domain (ccTLD) for the Netherlands, .NL, changed its name and legal structure on 1 January 2023.
The Registry has decided to legally separate the delegation of the .NL ccTLD (that is to say the right to operate it), which will remain with the original foundation (SIDN), from the operational and related activities of .NL. The latter have been transferred to a new private limited company, SIDN BV. The Registry has changed its structure in order to spread the business risks of its operations and in turn "safeguard the continuity of the .NL domain”. As a result, SIDN is the sole shareholder of the new company SIDN BV. The majority of the capital, including a “contingency buffer” (funds that set aside to deal with any unforeseen problems), will remain under the control of SIDN.
Despite this evolution, there will be no real change for holders of .NL domain names as the contract they entered into with SIDN when registering their .domain names has been transferred to SIDN BV and remains effective.
As well as announcing the changes to its name and legal structure, the Registry has also recently published some general .NL domain name statistics. According to SIDN, at the end of 2022, there were 6,299,000 domain names registered under .NL. This represents an increase of 68,000 domain names within 12 months. While the increase was not as significant as during the “Covid years” of 2020 and 2021, it was similar to the pre-pandemic trend. SIDN has also taken encouragement from the fact that the average lifespan of a .NL domain name is continually increasing. Thus, while there may have been fewer registrations in 2022, there were also fewer domain name cancellations.
Overall, SIDN believes that the future for .NL is going to be bright.
For more information on the registration or recuperation of .NL domain names, please contact David Taylor or Jane Seager.
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Respondent's domain name gains an "extra life" under UDRP
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied the transfer of the domain name xtralifeusa.com because the Complainant failed to prove that the Respondent had registered the disputed domain name in bad faith.
The Complainant was Xtralife Natural Products, Inc, a United States company operating in the field of nutritional supplements. It owned the domain name xtralifemiami.com and two United States trade marks for XTRALIFE NATURAL PRODUCTS, registered respectively in 2002 and 2019.
The Respondent was Xtralife Colombia S.A.S., a Colombian company operating in the field of pharmaceutical products, and two individuals acting as the owners of the company. It owned a Colombian trade mark for XTRALIFE registered by one of the company owners in 2008.
The Domain Name was xtralifeusa.com, registered on 25 December 2015. It redirected to a parking page, but had previously resolved to a website referring to the Complainant by reproducing the Complainant’s trade mark and logo and offering for sale the same products as the Complainant. The Complainant alleged that they were counterfeit, but this was denied by the Respondent.
To be successful in a complaint under the UDRP, a Complainant must satisfy the requirements of paragraph 4(a) of the UDRP, namely that:
(i) The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
As far as the first element was concerned, the Complainant contended that the Domain Name was confusingly similar to its trade mark XTRALIFE NATURAL PRODUCTS, given that it fully incorporated the dominant portion of its trade mark, namely XTRALIFE. The Respondent refuted these arguments by stating that the products in respect of which it registered its trade mark XTRALIFE were not the same as the Complainant and that the trade mark XTRALIFE was descriptive and coexisted with several other identical trade marks belonging to different companies in different fields. The Panel accepted the Complainant’s contention and found that the Complainant had established rights in the XTRALIFE NATURAL PRODUCTS trade mark and that the Domain Name was confusingly similar to the Complainant’s trade mark.
With regard to the second element, the Complainant asserted that the Respondent had no rights or legitimate interests in respect of the Domain Name since it had never authorised the Respondent to register or use the Domain Name, nor was the Respondent making any bona fide offering of goods or services or a legitimate non-commercial or fair use of the Domain Name. The Complainant further submitted that the Respondent was a former distributor and licensee of the Complainant from 2004 to 2020, and was using the Domain Name in relation to a website offering counterfeit versions of the Complainant’s products for sale. The Respondent claimed to have rights in respect of the Domain Name, based on its Colombian trade mark registration in 2008, as well as on the name of its company, incorporated in 2018.
The Panel found that it was not clear whether the Respondent’s trade mark was obtained primarily to circumvent the application of the UDRP or prevent the Complainant’s exercise of its rights, given that the Respondent was a former distributor of the Complainant’s products, and noting the claims made by the Complainant about the content on the Respondent’s website. The Panel eventually considered that it was unnecessary to decide under the second element, given its findings under the third element.
Regarding the third element, the Complainant claimed that the Respondent had registered the Domain Name in bad faith, since the Complainant’s trademark XTRALIFE NATURAL PRODUCTS was distinctive and the Respondent was formerly a distributor of the Complainant in Colombia. The Complainant added that the Respondent had begun using the website at the Domain Name in 2020 after the termination of the license, intentionally attempting to attract, for commercial gain, Internet users to its website by creating a likelihood of confusion with the Complainant’s trade mark as to the source, sponsorship, affiliation, or endorsement of the Respondent’s website and products. The Respondent argued that there was no bad faith in registering and using the Domain Name, since it was registered in 2015 and not in 2020, and was used based on the Respondent’s acquisition of trade mark rights in XTRALIFE in 2008.
The Panel found that it was not clear whether the Respondent had registered the Domain Name in bad faith when by all appearances the parties were still collaborating in 2015. Regarding the use of the Domain Name, the Panel found that, while the Parties were no longer collaborating, the Respondent’s motivations would be better suited to discovery and cross-examination in a court proceeding. In the Panel’s opinion, the fact that the Respondent might currently be infringing on the Complainant’s trade mark did not by itself result in a determination of the Domain Name being registered in bad faith, noting that the parties seemed to have been operating on a cooperative basis for a considerable period. The Panel therefore found that the Complainant had failed to prove that the Respondent had registered the disputed domain name in bad faith and denied the Complaint.
This decision underlines that the UDRP does not apply to all types of trade mark infringement per se, but applies to the bad faith registration and use of a domain name which is confusingly similar to a complainant’s trade mark and in which the domain name registrant has no rights or legitimate interests. In UDRP proceedings, a panel must make its best assessment of a respondent's motivation based on the evidence placed before it, which differs from court proceedings where discovery of documents and cross-examination of witnesses are possible. Under the UDRP, it is essential to prove that a disputed domain name was registered and is being used in bad faith. Complaints brought under the UDRP will fail when bad faith registration is not apparent, especially when the respondent is a former distributor or licensee of the complainant and the disputed domain name was registered while the parties were still collaborating.
The decision is available here.
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Panel shuts door on refiling in first-element denial
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied a Complaint for the disputed domain name bodynetic.com, finding that the Complainant did not have relevant trade mark rights for purposes of the first element of the UDRP, and entering a finding on the merits under the third element, effectively preventing any potential refiling.
The Complainant was The Posture Lab Pte Ltd., a Singaporean company that provided fitness centers, gyms, and related health and fitness training. The Complainant had adopted the name “Bodynetic” in mid-2021, and had submitted trademark applications for “BODYNETIC” in Australia and Singapore, neither of which had proceeded to registration at the time of submission of the Complaint. The Complainant also owned the domain name bodynetic.com.au.
The disputed domain name was registered on 18 December 2018 using a privacy service. The disputed domain name was listed for sale for USD 2,175 and was described on the associated web page as “a combination of ‘body’ and ‘kinetic’ that suggests activity, health, and movement. Possible uses: A heart rate monitor. A fitness class. A personal trainer. An activity tracker. A running program.” No underlying registrant details for the Respondent were disclosed by the registrar, and the Respondent did not come forward to submit a Response.
In order to prevail, a complainant must demonstrate, on the balance of probabilities, that it has satisfied the requirements of paragraph 4(a) of the UDRP:
(i) the disputed domain name is identical or confusingly similar to a trade mark or service mark in which the complainant has rights;
(ii) the respondent has no rights or legitimate interests in the disputed domain name; and
(iii) the disputed domain name was registered and is being used in bad faith.
Under paragraph 4(a)(i) of the UDRP, the Panel found that the Complainant did not possess UDRP‑relevant rights in a registered trade mark. The Panel held that the Complainant’s trade mark applications for “BODYNETIC” were by themselves insufficient to establish rights in a trade mark for purposes of the first element of the UDRP. The Panel further noted that it was open to the Complainant to attempt to establish unregistered trade mark rights, in light of the Complainant’s assertion that it had adopted the Bodynetic brand in mid-2021, but that the Complainant had chosen not to do so. Accordingly, the Complainant failed to satisfy the requirements of paragraph 4(a)(i) of the UDRP, and the Complaint had therefore failed.
In light of the Panel’s findings under the first element of the UDRP, the Panel did not consider it necessary to address the issue of whether the Respondent had rights or legitimate interests in the disputed domain name under paragraph 4(a)(ii) of the UDRP.
Under paragraph 4(a)(iii) of the UDRP, the Panel observed that, save for in instances of nascent unregistered trade mark rights, UDRP panels will not normally find bad faith where the registration of a domain name predates the accrual of a complainant’s trade mark rights. In this regard, the Complainant had only adopted the Bodynetic brand name in mid-2021, some two and a half years after the Respondent had registered the disputed domain name. There was no evidence to support a finding that the Respondent knew of the Complainant’s plans to adopt the Bodynetic brand name when the disputed domain name was registered in December 2018. The fact that the disputed domain name was being offered for sale did not alter the Panel’s findings. Indeed, a review of the historic WhoIs report, provided by the Complainant, indicated that the Bodynetic name had been adopted by various third parties in the past, and the disputed domain name had been registered on at least three prior occasions in 2011, 2016, and 2017.
The Panel further held that had the Complainant been able to establish its case under the first element of the UDRP, the Complaint would have ultimately failed under the third element, as it did not appear that the disputed domain name had been registered in bad faith. The Panel therefore stated that it would be inappropriate to suggest that the Complainant could consider a refiling upon the registration of UDRP-relevant trade mark rights.
There are a number of key elements that a prospective UDRP filer can take away from this decision. First, the burden of proof is on the Complainant – even in cases where a Respondent does not come forward to participate in the proceedings in any way, it is incumbent on the Complainant to prove its case under all three elements. Secondly, while a Complainant may successfully bring a UDRP Complaint based on claims of unregistered trade mark rights, a trade mark application alone is insufficient to give rise to standing to bring a UDRP Complaint. Thirdly, it is well established that merely parking a domain name and offering it for sale does not amount to bad faith per se – circumstances indicating that a domain name was registered with a view to selling it to the Complainant or to otherwise trade off the goodwill associated with a Complainant’s trade mark through the sale of the domain name will be highly fact specific. Finally, even where a Complaint fails on the first element, a UDRP panel may effectively “close the door” on a prospective re-filing by entering a substantive finding under the second and/or third elements, so as to prevent a further unsubstantiated Complaint being brought in the future.
A frank and objective appraisal of the strengths and risks associated with filing is required in any UDRP proceeding. Where a domain name is listed for sale, in the absence of evidence supporting an inference that a domain name registrant has sought to target a trade mark holder through a domain name, purchase of the domain name may instead be warranted.
The decision is available here.
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Respondent’s plausible explanation results in denial
In a recent decision under the Uniform Domain Name Dispute Resolution Policy (UDRP) before the World Intellectual Property Organization (WIPO), a Panel denied a UDRP complaint for the disputed Domain Name citustech.com, finding that the Complainant had failed to prove that the Respondent had registered the Domain Name in bad faith.
The Complainant was CitiusTech Healthcare Technology Private Limited, an Indian company operating in several countries across the world. The Complainant provided consulting and digital technology to healthcare and life science companies. The Complainant owned a trade mark for CITIUSTECH registered in 2014 and claimed that it started to use CITIUSTECH as its brand and logo in 2005. The Complainant argued that it grew exponentially as of 2013, earning more than 95% of its cumulative revenue after this year, and was awarded multiple business awards. The Complainant also asserted common law trade mark rights in CITIUSTECH.
The Respondent was Anthony Moussa, an individual, and MOO Companies, Inc, the company created by him. The Respondent registered the Domain Name on 15 May 2013 and had never actively used it. Rather, the Domain Name resolved to a parking page where it was offered for sale. The Respondent argued that he was unaware of the existence of the Complainant when he registered the Domain Name in 2013 but came up with the name "Citus Tech" for his IT company by combining the term "tech" with the translation of the term "quick" in Latin. The Respondent also argued that the terms "citius" and "citus" were not synonyms and comprised a different number of syllables.
To be successful in a complaint under the UDRP, a Complainant must satisfy the requirements of paragraph 4(a) of the UDRP, namely that:
(i) The domain name registered by the respondent is identical or confusingly similar to a trade mark or service mark in which the complainant has rights; and
(ii) The respondent has no rights or legitimate interests in respect of the domain name; and
(iii) The disputed domain name has been registered and is being used in bad faith.
As far as the first element was concerned, the Panel found that the Complainant had established rights in the CITIUSTECH trade mark, and that the Domain Name was confusingly similar to the Complainant’s registered trade mark.
The Panel declined to rule with regard to the second element, considering it was unnecessary given its findings under the third element.
With regard to the third element, the Panel found that the Complainant had failed to establish that the Respondent had registered the Domain Name in bad faith. The Panel underlined several factors which led it to think that the Respondent had, on a balance of probabilities, not registered the Domain Name in bad faith, in particular i) "citus" and "citius" were two different words, ii) the Complainant did not have any trade mark rights when the Domain Name was registered, iii) the Complainant had not established a reputation such that the Respondent could not ignore its existence when he registered the Domain Name, iv) the Complainant had not evidenced its presence in the United States where the Respondent resided, and v) the Respondent had provided a plausible explanation to justify his registration of the Domain Name. The complaint was therefore denied.
This decision once again illustrates that a complainant should be extremely careful before filing a complaint under the UDRP when a domain name registration pre-dates their registered trade mark rights and common law rights are not clear, in which case bad faith can only be established in very limited circumstances. The mere fact that a domain name is parked and offered for sale will not suffice if no evidence of targeting is available.
The decision is available here.
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