Category Archives: Domain Name Disputes

Confusing The Similarity Of Trademark Law In Domain Name Disputes

This article by Professor Christine Haight Farley originally published in the Akron Law Review anticipates doctrinal disorder in domain name disputes as a result of the new generic top-level domains (gTLDs).

The abstract for the article goes on to say that in the course of the intense and prolonged debate over the possibility of new gTLDs, no one seems to have focused on the conspicuous fact that domain name disputes incorporating new gTLDs will be markedly different from the first-generation domain name disputes under previous gTLDs.

Now second-generation disputes will have the added feature of the domain name having a suffix that will likely be a generic word, geographic term, or trademark. This addition is significant. Rather than disputes over <mcdonalds.com>, we will have disputes over <mcdonalds.ancestry>.

Before these new gTLDs, Uniform Dispute Resolution Procedure (UDRP) panels have routinely ignored the gTLD portion of the domain concluding that the suffix is inconsequential to their determinations of confusing similarity. This approach has already changed. While this change may seem trivial especially in a non-precedential system, the consequence of this change may be profound for trademark owners’ rights on the internet and portend a fundamental shift in how trademarks will be called upon to pick winners and losers in this new land grab.

It’s a 29-page article, which in its conclusion says:

The stated objective of the New gTLD Program was to enhance competition and consumer choice and enable the benefits of innovation via the introduction of new gTLDs. That objective would imply that new second-level domains should be widely available for registration. Registrants should be forewarned, however, that any second-level domain name registration that contains a trademark may be found to be confusingly similar even though the new gTLD should indicate to internet users that the domain name would not belong to the trademark owner. Continued lowering of the threshold as to what constitutes a “confusingly similar” domain name may make most of the newly created domain names subject to trademark holder takeover.

Currently the article by Farley, who is a Professor at the American University Washington College of Law, is currently only available publicly on the Social Science Research Network here.

.CL Registrants Get Free Legal Assistance in Disputes

Registrants of .cl domain names that become caught up in disputes regarding their domains may now be eligible for free legal assistance in a programme NIC Chile has facilitated.

The programme is offered through an alliance of legal clinics at Chilean university law faculties. It’s aimed at helping registrants, mostly for individuals and small businesses, who may not have the resources to defend disputes.

NIC Chile, the country code top-level domain (ccTLD) manager for .cl, will not take a position in these disputes but believes it is necessary to offer registrants who opt for this benefit the possibility of being advised by entities independent of NIC Chile. The legal advice will be given by undergraduate and graduate law students, with the guidance of their professors, can work on improving the conditions of defense of users of .CL domains.

The advice involves assigning academic value to the work of the legal consultancy, so that students can acquire the tools to represent the client in this online arbitration system, which dispenses with the traditional class teaching.

Initially the programme began with a pilot involving 3 universities:

  • Finis Terrae University, SME Legal Clinic
  • Catholic University of the North, legal clinic
  • Catholic University of the Most Holy conception, legal clinic.

The results of the pilot programme were positive and based on the good results, NIC Chile say other registries have shown an interest in replicating the service. Following the success of the pilot phase the program is incorporated as a permanent service available to all .cl registrants that are involved in domain name disputes and who comply with the eligibility conditions established by each participating law faculty.

The original NIC Chile announcement is available only in Spanish here and for accuracy this should be consulted.

New .EU and .ЕЮ Registrations Continue to Grow, But Total Registrations Drop

There were 171,667 new .eu and .ею domain name registrations in the fourth quarter of 2018, but despite this growth, total domains under management decreased from 3,747,879 as of 31 October to 3,684,750 at 31 December according to EURid's Q4 2018 Progress Report released last week.

Portugal, Norway and Cyprus, as in the third quarter of 2018, were again the countries with the highest growth with 13.2%, 9.1% and 4.9% respectively for the fourth quarter (11.0%, 9.9% and 10.1% respectively for Q3), according to the report [pdf].

Annually, the countries with the top growth to the end of December were Cyprus (46.0%), Portugal (35.6%) and Romania (34.0%).

Leading the countries with the biggest declines was the United Kingdom largely if not entirely due to Brexit and eligibility uncertainty with a 24.1% decline for year and 11.8% for the quarter taking total registrations for the UK to 240,887, down from 317,286 at the end of December 2017.

Another reason for the decline is EURid’s ramped up efforts towards tackling domain name abuse within .eu, deleting over 36,000 suspended domain names in October alone.

The top ten countries for .eu registrations were Germany with 989,432 registrations, down 0.6% for the quarter, followed by Netherlands (474,697 and down 5.5%), France (330,323 and down 1.9%), Italy (267,465 and up 1.1%), Poland (265,571 and up 1.1%), UK (240,887 and down 11.8%), Czech Republic (156,868 and up 0.7%), Austria (153,939 and down 4.8%), Belgium (141,343 and up 0.9%) and Spain (116,985 and up 1.0%).

The average renewal rate for the 2 top level domains was 77%, up 3% since Q3.

A major development in the fourth quarter was the unveiling of the 2018 .eu Web Awards winners. Overall, the nomination and voting period for the 5th iteration of the .eu Web Awards tallied over 130 nominees with more than 9,500 votes. The finalists attended the gala on 21 November 2018, where the winners were announced.

Another meaningful development from the quarter was EURid’s continued participation in CodeWeek. Aiming to make a beneficial impact on today’s youth, EURid built upon last year’s efforts with even more workshops and interactive sessions for children to take part in, all in an effort to teach them the fundamentals of coding and programming.

The full report is available from:
https://eurid.eu/media/filer_public/c0/18/c0189373-1beb-40a2-b59b-a007a62483ed/quarterly_report_q4_2018_newcsg.pdf

UK Retailer ASOS Seeks Ownership of “Collusion” In Domain Names

British clothing giant ASOS is seeking ownership of the word “collusion” in domain names according to a cease and desist letter sent to an EFF client. According to a post on the EFF blog, their client’s “domain doesn’t have anything to do with clothing—it’s about contemporary U.S. political debates. It is about as far from trademark infringement as possible.” Tuesday EFF sent a response letter demanding ASOS withdraw its baseless threat.

In their post, the Electronic Frontier Foundation (EFF) explains the full backstory as “something of a Russian nesting doll of stupidity. It begins with Rudy Giuliani, former New York mayor and current attorney to President Donald Trump. Last year, some Twitter users noticed that Mr. Giuliani was making typographical errors in his tweets in a way that inadvertently created well-formed URLs. A September 15, 2018 tweet read, in part, as follows: ‘#REALNEWS: Woodward says no evidence of collusion.So does Manafort’s team.’”

“After seeing this tweet, our client registered ‘collusion.so’ and directed the URL to the Lawfare blog’s coverage of connections between President Trump and Russia. Other people have also registered the domain names of Giuliani typos. Giuliani, who was once named a cybersecurity advisor to Trump, falsely claimed that Twitter was ‘invading’ his tweets.”

“What does this have to do with clothes, you ask? Well, in October 2018, Asos launched a new clothing line called ‘Collusion.’ It describes Collusion as ‘a new fashion brand offering bold, experimental, inclusive styles for the coming age.’ Not content with a vaguely dystopian branding choice, Asos followed up by sending a threatening letter to our client claiming that the registration of collusion.so infringes its trademark.”

“Asos’s lawyers are accusing our client of ‘taking unfair advantage of ASOS’ reputation in the COLLUSION brand and the COLLUSION trade mark by luring customers to your website for your own gain.’ This is absurd. Our client wasn’t even aware of the Collusion brand until Asos sent its letter. Our client registered collusion.so as a satirical comment on Giuliani’s tweet and the state of U.S. politics. No one is going to confuse Lawfare’s Trump-Russia coverage with Asos’s self-described ‘ultimate youth label.’”

But ASOS and their lawyers didn’t do their homework. EFF’s client registered their domain name before Asos launched its Collusion label and further, “the URL points to a page about the political meaning of collusion—not to anything about clothing.”

“Asos’s letter to our client opens with large-type red text: ‘Failure to respond to this letter may result in further legal action being taken without further notification to you.’ The law firm that sent the threat, Stobbs IP, has a history of abusing the universal domain-name dispute resolution policy, or UDRP, to try to take control of others’ domains. If Stobbs IP tried to do that to our client, it would be yet another attempt at reverse domain hijacking. We hope that Asos and Stobbs IP have enough sense to withdraw their threat.”

German Court Rules Domain Registrars Liable For Some Pirate Site Infringements

A German court has ruled that domain name registrars can be held liable if a website owner is unresponsive to takedown requests, according to a TorrentFreak report, even when the infringing activity is limited to a single page.

The ruling came from the Higher Regional Court of Saarbrücken who ruled that even a single link can require a registrar to take a domain offline. TorrentFreak reports the case was filed by Universal Music over Robin Thicke’s album Blurred Lines and a now defunct torrent site. A similar order has hit The Pirate Bay as well.

The case first came to be noticed in September 2013 when H33T.com, one of the most-visited torrent sites at the time, disappeared. TorrentFreak notes the “downtime was initially shrouded in mystery, it later became clear that the site had been targeted in a copyright infringement action.”

“In order to stop the distribution of a copy of Robin Thicke’s album Blurred Lines, Universal Music had obtained an injunction against Key-Systems, a German-based registrar where the H33t.com domain name was registered.”

Key-Systems appealed the ruling due in part to the precedent it set but at the time had no other option than to comply. Now TorrentFreak reveals the “Higher Regional Court of Saarbrücken concluded Key-Systems can be held secondarily liable for the infringing actions of a customer if it fails to take action if rightsholders point out ‘obvious’ copyright infringing activity online.”

“This means that, if a site owner is unresponsive to takedown requests, Key-Systems and other registrars can be required to take a domain name offline, even when the infringing activity is limited to a single page.”

The Bundesverband Musikindustrie (BVMI, German Federal Music Industry Association) has expressed satisfaction with the ruling.

“This is a further important clarification for the benefit of the creative and its partners, which helps ensure that the contours of the adjudicated Internet become increasingly clear and fair,” said René Houareau, Managing Director, Law and Policy at the BVMI [in German].

“The OLG affirms the responsibility of the so-called registrars under clearly defined conditions and are affected rights holders so that another important legal means at hand to defend themselves against the illegal use of their content on the Web.

“As the Registrar, in contrast to an access provider, has a contractual relationship to the one who is actually responsible for the making available of copyright illegal content, the Court here rightly rejects a merely subsidiary liability and in particular with regard to an effective redress in favour of the rights holders.”

However the website in question is no longer online. H33T reappeared first at H33T.eu and later at H33t.to.

TorrentFreak notes how the German ruling can affect other sites and registrars as well. They note a similar legal battle involving the registrar 1 API who lost a case earlier this year that required it them to disconnect several Pirate Bay-related domains.

“The domains in question include thepiratebay.gd, thepiratebay.la, thepiratebay.mn, and thepiratebay.vg. These were already disabled years ago, and are no longer in use, but it confirms that registrars can be required to take action against pirate sites.”

Lawyer Mirko Brüß told TorrentFreak that in this case, the court clarified that registrars not only have to take a domain offline, they should also prevent it from being transferred to another company.

TorrentFreak further reports that the “Pirate Bay’s former registrar 1 API was not allowed to appeal the case any further, but Key-Systems still has the option to take the case to the German Federal Court. This means that the H33T case may not be over yet.”

Over 33,000 Domain Names Seized Selling Counterfeit Goods in Latest Operation In Our Sites

As part of an international operation, Europol’s Intellectual Property Crime Coordinated Coalition (IPC3) seized 33,654 domain names distributing counterfeit and pirated items online. This takes the total to more than one million that have been seized in the past 12 months. Continue reading Over 33,000 Domain Names Seized Selling Counterfeit Goods in Latest Operation In Our Sites

Nominet Suspends 33,000 .UK Domains Following Law Enforcement Notifications

Almost 33,000 .uk domain names were suspended in the 12 months to the end of October 2018 following notification from the police or other law enforcement agencies that the domain name was being used for criminal activity. Continue reading Nominet Suspends 33,000 .UK Domains Following Law Enforcement Notifications

Domain.me Suspends Incels.me Due To Content Violations

The registry for .me domain names, Domain.me, has suspended the incels.me domain name “due to the content that violated the .ME registry’s anti-abuse policy.”

The registry says “the decision to suspend the domain was made after the .ME Registry exhausted all other possibilities that could assure us that the registrant of incels.me domain and the owner of incels.me forum was able to remove the subject content and prevent the same or similar content from appearing on the forum again.”

Then on 8 May the .me country code top level domain (ccTLD) registry was notified that certain members of the online community at incels.me forum might have been involved in or associated with the Toronto van attack on 23 April. Ever since, they have closely monitored the content on incels.me forum and determined that it was allowing part of its members to continuously promote violence and hate speech.

On 12 September the Registry of .ME domains asked ZhuHai NaiSiNiKe Information Technology Co Ltd., the sponsoring registrar of incels.me domain, to send an official notice to the registrant of incels.me to avoid suspension of incels.me domain by taking down the content that violated the .ME registry’s anti-abuse policy and by preventing the same or similar content from appearing on the forum again.

Upon inspecting incels.me forum for policy violations on 15 October, the .ME Registry determined that the content that encouraged acts of violence and hate speech still appeared on the forum. Having witnessed this disregard of not only .ME Registry’s policies and suspension warnings, but also of incels.me forum’s policies the domain registrant formulated themselves, the .ME Registry suspended the domain and decided that it would remain suspended.

“Incels” is short for “involuntary celibate”, a group of people who are usually white, male, heterosexual and right wing and unable to find sexual partners. Wikipedia notes “discussions in incel forums are often characterised by resentment, misanthropy, self-pity, self-loathing, misogyny, racism, a sense of entitlement to sex, and the endorsement of violence against sexually active people. The Southern Poverty Law Center described the subculture as “part of the online male supremacist ecosystem” that is included in their list of hate groups. At least four mass murders, resulting in 45 deaths, have been committed in North America by people who have either self-identified as incels or who had mentioned incel-related names and writings in their private writings or Internet postings. Incel communities have been criticised by the media and researchers for being misogynist, encouraging violence, as well as spreading extremist views and radicalising their members.”

Microsoft Gains Court Orders Taking Down Domain Names With Aim of Disrupting US Elections

Around the world, not just in the United States, there has been a lot of evidence of the Russian government’s involvement, directly or indirectly, in elections. This week, Microsoft announced their Digital Crimes Unit successfully executed a court order to disrupt and transfer control of 6 domain names created by a group widely associated with the Russian government and known as Strontium, or alternatively Fancy Bear or APT28.

In a post by their own President, Brad Smith, on the Microsoft blog, Smith writes how Microsoft has “now used this approach 12 times in two years to shut down 84 fake websites associated with this group. Attackers want their attacks to look as realistic as possible and they therefore create websites and URLs that look like sites their targeted victims would expect to receive email from or visit. The sites involved in last week’s order fit this description.”

Last week’s order transferred control of the 6 domain names listed below from Strontium to Microsoft, preventing Strontium from using them and enabling Microsoft to more closely look for evidence of what Strontium intended to do with the domains. The 6 domains are:

Microsoft note that these domain names show a broadening of entities targeted by Strontium’s activities. One appears to mimic the domain name of the International Republican Institute, which promotes democratic principles and is led by a notable board of directors, including 6 Republican senators and a leading senatorial candidate. Another is similar to the domain used by the Hudson Institute, which hosts prominent discussions on topics including cybersecurity, among other important activities. Other domains appear to reference the U.S. Senate but are not specific to particular offices. Microsoft makes it clear that they currently have no evidence these domains were used in any successful attacks before the DCU transferred control of them, nor do they have evidence to indicate the identity of the ultimate targets of any planned attack involving these domains.

Despite last week’s steps, we are concerned by the continued activity targeting these and other sites and directed toward elected officials, politicians, political groups and think tanks across the political spectrum in the United States. Taken together, this pattern mirrors the type of activity we saw prior to the 2016 election in the United States and the 2017 election in France.

Microsoft is concerned that these and other attempts pose security threats to a broadening array of groups connected with both American political parties in the run-up to the 2018 elections. So this week Microsoft announced they are expanding their Defending Democracy Program with a new initiative called Microsoft AccountGuard. This initiative will provide state-of-the-art cybersecurity protection at no extra cost to all candidates and campaign offices at the federal, state and local level, as well as think tanks and political organizations we now believe are under attack. The technology is free of charge to candidates, campaigns and related political institutions using Office 365.

As a special master appointed by a federal judge concluded in the recent court order obtained by DCU, there is “good cause” to believe that Strontium is “likely to continue” its conduct. In the face of this continuing activity, we must work on the assumption that these attacks will broaden further. An effective response will require even more work to bring people and expertise together from across governments, political parties, campaigns and the tech sector.

ICANN Hits .PHARMACY With Breach Notice

ICANN has hit the operators of the .pharmacy new gTLD with a breach notice for their failure to operate the gTLD “in a transparent manner consistent with general principles of openness and non-discrimination by establishing, publishing and adhering to clear registration policies, as required by” their registry agreement.

ICANN also deemed the .pharmacy operator, the National Association of Boards of Pharmacy (NABP), was also non-compliant due to its “failure to publish on its website a primary contact for handling inquiries related to malicious conduct in the TLD feedback.” ICANN has given NABP until 11 August to “cure these breaches” or they’ll risk further sanctions, which could lead to termination of their right to operate the new gTLD.

NABP logoThe complaints came about following a complaint from Canada Wide Pharmacy, a Canadian online pharmacy who makes available medications to Americans at vastly reduced prices compared to the prices in America.

Canada Wide Pharmacy complained after they were refused a .pharmacy domain name and a Public Interest Commitment Dispute Resolution Procedure (PICDRP) Standing Panel found NABP to be in breach. The PICDRP Standing Panel voted 3-0 in favour of Canada Wide Pharmacy.

The result doesn’t mean Canada Wide Pharmacy will get their domain name, but they have made life uncomfortable for NABP.