Safenames Blog
Stay current on important topics that impact your domain portfolio and brands online
February 23, 2018

Unlike a lot of arbitration policies, Chinese extensions such as ‘.CN’ restrict complaints that involve domain names which have been in existence for longer than two years. The legal framework which applies this principle is laid out in Article 2 of the CNNIC Domain Name Dispute Resolution Policy. Specifically:

‘The policy is applicable to disputes result from registration or usage of domain names. The disputed names shall, within the range of “.CN”, “.中国” domain names that were under the administration of China Internet Network Information Center (CNNIC). However, the Dispute Resolution Service Providers do not accept the Complaint regarding domain names with registration term of over TWO years.’

The foundation of the two-year time bar derives from Chinese civil actions, specifically the General Civil Law Rules of the People’s Republic of China, which before March 2017, adopted a two-year time bar for civil actions. This principle was subsequently amended after March 2017, to increase the two-year time bar to three years. The recent changes under the civil code have also prompted consideration of the time bar in domain disputes, although nothing is set in stone so far. While some might welcome the slight increase of the time bar, removal of the limitation altogether would perhaps be more in tune with other similar policies, such as the UDRP, which at the moment, does not prohibit a complainant from filing after a set period.

One principle which has already proven to be valuable for brand owners, is the ability of a Panelist under the CNDRP, to take into account new acquisitions of domain names as fresh registrations, falling in line with the guidelines in WIPO Overview 3.0. Specifically guideline 3.9, which discusses a new acquisition of a domain name in relation to Policy Paragraph 4(a)(iii), relating to bad faith registration and use:

‘…the transfer of a domain name registration from a third party to the respondent is not a renewal and the date on which the current registrant acquired the domain name is the date a panel will consider in assessing bad faith. This holds true for single domain name acquisitions as well as for portfolio acquisitions.’

Under the CNDRP, case law has arguably been the main authority when looking at issues relating to the two-year time bar. The case of Leister Brands AV v. Chen Qiuheng DCN-1500641 is a particularly useful case on this topic, where the Panelist discussed the significance of a domain acquisition being akin to a new registration, as it requires similar processes and procedures. Following the case of Leister, there have been several follow-up cases, including Safenames’ most recent decision; Bulgari S.p.A v. 徐东彦 Case No. DCN-1700789. In this decision, the Panel discussed, at length, the applicability of the Leister case as well as other supporting factors. Such discussions included the trend adopted by WIPO’s Overview and the need for consistency in CNDRP decisions, even though the CNDRP, by nature, does not conform to following case law as precedent in domain disputes.

Overall, we can begin to see how attitudes are changing in the CNDRP, meaning that complaining parties have more scope to file complaints, even if they exceed the two-year time bar. However, the issue remains that parties are barred from filing claims, even if there is a clear case of abuse in the registration or use of a domain name. This author, in particular, sympathises with a lot of brands who face egregious cases of cybersquatting, but due to the two-year bar, cannot proceed with a complaint.

Only time will tell, whether or not complaints under the CNDRP will give more leniency to these type of cases. For now, brand owners can take some solace, knowing that a claim is not written off forever if it has been registered for longer than two years. A suggestion for brand owners at this stage would be to monitor infringing domain names which exceed the time bar to see if the Registrant details change hands later on.

If you need advice on the two-year time bar, or domains involving the .CN extension, you can contact our Brand Protection department or your Account Manager for further information.

Author – Dan Smith
Safenames Legal

On October 18, 2017, Safenames successfully recovered the domain name of a local fostering company which had been held for ransom by a notorious cybersquatter.

The Respondent, who was later exposed as WESLEY PERKINS of Birmingham UK in a recent article published by the Telegraph, found Mr Perkins to be behind numerous aliases and fake offshore companies that had been used to buy up the domains of many established businesses including ROLEX and ExxonMobil. was one such domain, which was inadvertanetly lost by its original owners who operated a fostering agency from the website. After rejecting Mr Perkins attempts to blackmail the fostering agency in to a sale and exhausting all other means, Safenames were instructed to file a UDRP complaint with the World Intellectual Property Organization.

Micah Ogilvie
Head of Legal

Micah Ogilvie is head of legal at Safenames Limited and manages the IP department. He has advised both global enterprise clients and smaller e-commerce and internet companies on brand protection, domain name dispute proceedings and cases of trademark infringement on the Internet. He has represented companies in more than 100 disputes through various international arbitration bodies, including the World Intellectual Property Organisation, the Czech Arbitration Court and the Hong Kong International Arbitration Centre. Safenames is a leading global domain name registration company that specialises in corporate domain portfolio management and online brand protection services.

Safenames were able to succesfully establish the fostering company’s legal right to the domain, despite having no registered trademarks at the time of dispute and an abusive pattern of conduct on the part of Mr Perkins.

The Panel in the case further held:
“The Panel would also add that it is unfortunate that the business practices of Mr. Perkins appear to have carried on for the most part unchecked for many years, notwithstanding the multiple findings made against him in UDRP proceedings and the brazen nature of his conduct. Particularly, concerning is that Mr. Perkins seems intent on taking advantage of the fact that frequently it will make more commercial sense for a victim of his cybersquatting activities to pay him monies to retrieve the Domain Name than to incur the legal fees and the cost associated with proceedings under the Policy.”

It is important to note that the domain industry is primarily made up of respectable investors, however the panel’s decision does beg the question of whether more can be done by national laws to criminalise the activities of serial cybersquatters. Conservative MP and chairman of the digital, culture and sport select committee, Damian Collins, has called for an “urgent review” to combat this level of extortion and offer more protection for British businesses.

Although brand management presents many challenges for brand owners, Micah Ogilvie, who is head of legal services at Safenames, believes brands can do more to protect themselves from unscrupulous domain investors who prey on their intellectual property.

“Although advertising budgets are often regarded as a necessity to help build a brands reputation, maintaining that reputation through a brand protection strategy is often overlooked. Budgets for brand protection are often minimal or non-existent and many brand owners adopt a reactive approach.

Brands need to understand that when it comes to protecting their most important assets, cheap is not always better. The cheapest domain registrars are not always the most secure, what is of more importantance is being able to pick up the phone and discuss any issues with a designated account manager that understands your portfolio and can notify and advise you appropriately. When a brand owners consolidate there domains into a single portfolio, this makes it easier for them to manage”

The notion of constructive notice derives from US trademark law, specifically §1072 (Section 22 of the Lanham Act). In essence, as soon as someone has registered rights in and to a particular word, phrase or logo, the rights will be in the public domain, and everyone from the US is deemed to have notice of those specific rights.

For domain disputes, it is the consensus view that “Constructive Notice” or “Wilful Blindness” should not be applied outside the US (WIPO Overview 3.0, Paragraph 3.2.2),. One explanation for this reasoning is that a Respondent would have to have an extensive knowledge of trademarks and trademark law, before registering a disputed domain. Understandably, someone based in China will not necessarily know of trademark rights in Spain. Many WIPO decisions have discussed this principle and an example of which is seen in Aspenwood Dental Associates, Inc. v. Thomas Wade. Case No. D2009-0675, where Panellist, Richard G. Lyon, held that:

“The doctrine of constructive notice is rarely applied in Policy proceedings, WIPO Overview, paragraph 3.4. The exceptions to this general rule almost always occur in cases in which standard indicia of cybersquatting are present, Kellwood Company v. Onesies Corporation, WIPO Case No. D2008-1172 – not the case here”.

Therefore, it is clear that the threshold for claiming constructive notice is very high and has only applied in clear cut cybersquatting disputes, where circumstances show that it was extremely likely that the Respondent had knowledge of the Complainant’s trademark rights in and to a particular word or phrase. One could argue that as the digital age grows more and more, the expectation of registrant’s to do basic due diligence checks is higher, especially with the existence of public trademark databases like the EUIPO and TM view, which will show trademarks at a click of a button. One case which particularly caught this writer’s eye was Honeywell Safety Products USA, Inc. v. Michele Dinoia, Macrosten LTD. Case No. D2015-1834, in which the Panellist, Gabriela Kennedy, held that Respondents’ who are experienced domain users must: “bear the burden for failing to act with as little diligence as performing a trademark or website search (at no cost at all) that would have disclosed the existence of the Complainant”. Decisions like this show that a higher burden is applied for experienced domainers, who through their day-to-day activity of registering domains, should know the importance of brands and registered trademarks and do basic due diligence checks before considering to a register a domain name. Building on Gabriela Kennedy’s comments, the decision given by Panellist, Sok Ling Moi in All Saints Retail Limited v. Wang Ya Ya. Case No. D2016-1809 explained that:

“In this day and age of the Internet and advancement in information technology, the reputation of brands and trade marks transcends national borders. A cursory Internet search would have disclosed the ALL SAINTS trademark and its extensive use by the Complainant. As such, a presumption arises that the Respondent was aware of the Complainant and its trade mark when it registered the disputed domain name.

In conclusion, one can now see how the principle of constructive notice is applied outside of the US in domain disputes. However, factors such as geographic distance and the reputation of a trade mark in a given territory are still important when making assumptions of a Respondent’s knowledge.

If you need advice on “constructive notice” with domain disputes, you can contact our legal department (, or if you are an existing customer, please contact your Account Manager for further information.

Author – Dan Smith
Safenames Legal

Protecting brands and marks online has been a complicated process since the introduction of new gTLDs. Fortunately, registries with large portfolios of TLDs, like Rightside, have begun offering the Domain Protected Marks List (DPML) service, to cover a mark on multiple domain extensions. Rightside’s own DPML covers all 40 of its TLDs, including highly relevant business verticals and concentrations, from .MORTGAGE and .SOFTWARE, to .SALE and .SOCIAL. This past April, Rightside launched an upgrade of DPML that has made the service more valuable than ever.

When DPML was first offered, it covered rightsholders’ exact-match trademark as recognized by the TMCH. Since then, domain squatters have begun taking advantage of the exact-match limitation by slightly altering trademarks in the names they register. To combat this, Rightside’s upgraded DPML offers subscribers the ability to create up to ten Variants of their mark that are covered by the same list. With the trademark and ten variants secured under all 40 new TLDs, each DPML subscription can protect up to 440 domain names.

In addition to Variants, DPML covers all domains in a list in over 200 supported IDN languages, and now includes coverage for Premium-tier domain names, as well. With such a broad blanket of protection, Rightside’s DPML now offers one of the most powerful tools for modern mark holders in a single, easy-to-manage package.

While DPML has made brand protection much easier, it now enables rightsholders to pivot from protection to true brand enhancement. With the upgraded DPML service, it is now possible to activate any domain protected in a list with no additional activation cost. This new feature is a very valuable option for any brand’s marketing or sales team. An activated domain can quickly be employed for a landing page, a campaign, or a Branded Short Link, and represents a real opportunity to generate value with domains that may have otherwise sat unused forever.

Whether the priority is protection or enhancement, DPML—especially in its new and improved form—gives mark holders added flexibility and confidence to tackle both current and future obstacles to successfully managing a trademark.

For more information or to purchase please reach out to your Safenames representative today or visit our DPML Page

Guest Blog by Rightside

March 31, 2017

.eco – the new domain extension for those committed to positive change for the planet – is nearing the end of the 60-day sunrise period. Over the past few months, .eco has met with corporate registrars, including Safenames, to review the value of the .eco extension and its applicability to corporations.

One of the questions we have been asked is “Is .eco for global corporations?” The answer is a resounding yes.

The .eco community is made up of millions of businesses, organizations and people who are committed to positive change for the planet. In recent years, Corporate Social Responsibility (CSR) has taken on an increasing role within corporations’ overall strategic goals and missions. Global brands including Unilever, Michelin, Samsung, Ikea and Johnson & Johnson, to name a few, are leading the way in the world of CSR.

In a recent Forbes article, Reputation Institute managing partner Fernando Prado said “Companies are not communicating what they do, their good deeds. A lot of times we see that companies have a lot of people who do not know a lot about what they’re actually doing … If they are able to communicate, they can build their reputations and reputations build business.”

Helping companies and organizations tell their sustainability story is one of the driving forces behind the creation of .eco. According to Trevor Bowden, co-founder of .eco, “We know that people care about the environment and want to make better choices. This has been shown in study after study. What we saw was a need for a way for people to better understand what companies, products and services matched their own values. So we created .eco, the only environmentally-focused domain backed by the community.”

To increase trust and transparency, in addition to a .eco domain, companies will be able to complete their .eco profile and use the .eco trustmark. These free services will help them communicate their sustainability story to their investors, employees and more importantly, their customers.

According to a recent study from Unilever, getting that communication right could have a real impact on the bottom line. Their study of 20,000 adults found that “more than one in five people would actively choose brands if they made their sustainability credentials clearer on their packaging and in their marketing”, representing “a potential untapped opportunity of €966 billion out of a €2.5 trillion total market for sustainable goods.”

In the words of Keith Weed, Unilever’s Chief Marketing and Communications Officer, “[companies] must act quickly to prove their social and environmental credentials and show consumers they can be trusted with the future of the planet and communities, as well as their own bottom lines.”

.eco is an ideal extension for any corporation that wants to:

  • showcase specific commitments to the environment, or launch an awareness campaign about the good work they do;
  • highlight in-house sustainability initiatives, such as recycling and ridesharing programs, being paper-free, or operating a green data centre;
  • promote their eco-friendly products and services, such as certified organic food, home cleaning products or consumer goods.

As the .eco sunrise period comes to a close on April 2, 2017, the question for corporations isn’t “Is .eco for me?”. The right question is “How can we stand out from the crowd to better communicate our CSR?” The answer is .eco.

Michael Ward
VP, Business Development
Big Room (.eco Registry)

Looking for inspiration for your next website? Instead of thinking outside the box, let’s try eliminating the box altogether. A creative domain name is not only versatile, but also powerful. Whether you’re working on your latest innovation, launching a marketing campaign, advocating for justice or looking to start a riot, an outstanding domain may just be the fast-track to achieving your goals. Here are four ways to use a .SUCKS domain creatively.

1. Product Innovation Research
So you’ve got a fantastic idea, but you’re not sure how to further develop it. When working on a new product, it’s vital to gather as much feedback as possible along the way. Survey tools, prototypes and email campaigns should all be in your strategy, but including a unique domain to bring it all together can work wonders. Having your own domain along the way not only provides you with a centrally-managed development platform, but it also gives you an avenue through which to chisel your brand.
Maybe your company is designing 3D printers for everyday households and you want to generate some buzz with, or else your Kickstarter campaign for new-and-improved sex toys has broken 10k and you want to spread the word with—no matter your niche market, you can gather a whole lot of interest and information with a creative domain name., so gather as much crowd-sourced knowledge as possible to provide consumers with a new product that they actually want.

2. Customer Service Satisfaction
What if you gave your customers a platform where they truly felt heard? Let’s face it, customer service representatives often get a bad rap—be it cellphone service providers, airlines or the collections services. Rather than having customers wait on hold with elevator music to voice their grievances, why not retire outdated customer service ideas, let go of the unbranded FAQs and help your customer feel truly heard with a .SUCKS domain.
Work for an internet or mobile service provider? Try, or to direct customers towards better data packages. Run a food delivery service? could do the trick. There are many ways to identify with your customers’ struggles while propelling them to less-sucky solutions.—so make sure yours know you’re listening!

3. Marketing Campaigns
Taco Bell set the bar high, driving customers by the thousands with its “sharing sucks” campaign. Whenever people feel strongly about a brand or a product, you can get creative with your marketing message. Brands can reinforce consumer loyalty or attract new customers by appealing to their ideals, hopes or fears while strategically pushing a service or product. A .SUCKS domain let’s you do just that.

A gum manufacturer could steal the spotlight with a platform like; Axe, already notorious for its viral campaigns, could pull it off once more with Selling on-the-go stain remover? might be the domain for you. If you have a fantastic marketing campaign up your sleeve, a .SUCKS domain could be just the thing to drive it home., so let’s not annoy potential customers with the same old ads time and time again. Mix it up with a creative campaign and the domain to match.

4. Social Activism
Apathy sucks, and the world needs more altruistic hearts. Unfortunately, NGO voices are often muffled by the noise of corporate giants pumping money into lush advertisements. But viral marketing doesn’t have to be backed by Wall Street to get attention. And in times like these, providing a platform for thousands of passionate individuals longing to bond over social injustice is as noble a cause as any.
Whether you choose to build on the fire fuelled by the Women’s March with a site like, or you want to raise legal fees defending immigrants affected by the president’s dubious executive orders with, a .SUCKS domain gets straight to the heart of the issue., so let’s make a some changes, and fast.

The Takeaway
These four ideas can get you started, but the possibilities are endless. If you feel passionate about something, a unique platform can carry your voice to millions of individuals. Operation Incredible thought so too, so they launched to share tips and tricks with busy techies. Is a beloved school being forcibly closed down in your neighborhood? Are you annoyed by hipster beards overtaking the face of every mildly-artsy skinny white boy in your town?

No matter how universal your cause, a .SUCKS domain gives you a voice. Start the conversation today.

Photos: Shutterstock /, Shutterstock / Elnur, Flickr / Liz Lemon