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Article by Micah Ogilvie

The recent case of Pret A Manger Limited v. Jack Tang; D2018-2059 (concerning the domain name “pret.app”) highlighted the importance of credibility under the Uniform Domain Name Dispute Resolution Policy (UDRP). Whilst the courts are better equipped to evaluate the Parties’ credibility in a dispute, much can be ascertained from the Parties’ submissions as regards their background, intentions and motive.

In the above case, the Complainant was the international sandwich shop commonly referred to as “Pret” which operates over 500 stores world-wide. The Complainant holds approximately 480 trademarks which incorporate the term PRET and in December 2017 the Complainant launched an app for smartphones and tablets in the United States of America (“United States”).

The Respondent referred to himself as an “Internet entrepreneur”, who claimed that he registered the domain name to launch a French website to help students in France find work opportunities.

As the burden of proof rests with the Complaining party, they have considerable control over how the Respondent will be perceived in a UDRP dispute. He has the task of demonstrating to a panel that the Respondent possesses the prototypical characteristics found in a “Cybersquatter”, namely, that his intentions were to take unfair advantage of Complainant’s trademark, and the driving force behind such actions was financial or otherwise.

Against a defaulting Respondent, the effects can be damaging, leading to the loss of his domain name and the label of “Cybersquatter”. In the event the Respondent decides to defend himself, he has the task of vindicating his name, demonstrating to the Panel that the Complainant’s allegations are false/ misplaced, or that he, in fact, does have a right or legitimate interest in the disputed domain name.

The Panel then has to decide the case on the merits of both Parties arguments and which presentation of the facts it believes to be more credible.

In cases where the evidence against the Respondent is overwhelming, it would be difficult for a Respondent to defend against the Complainant’s arguments (in these cases it is less likely a Respondent would submit a response), but where the facts are less clear, credibility can play a vital role in determining legitimate interest and bad faith. In such cases, the UDRP becomes a balancing act, whereby inferences can be drawn which tip the scale in favour of one of the Parties.

The Panel in Pret had such a decision to make. Even after the submission of both arguments the case was finely balanced. The Panel then directed its attention to the Respondent, stating:

“Much therefore hinges on the general credibility of the Respondent.”

In other words, the Panel had to decide whether the Complainant had done enough to establish the Respondent as a “Cybersquatter”, or is the image portrayed by the Respondent to be believed?

The Panel examined the various articles produced by the Respondent which showed his entrepreneurial acumen in previous ventures and found:

“Taken together, these various articles appear to project the image the Respondent has claimed, namely of an Internet entrepreneur who has launched a successful student job search website, followed by a successful visiting massage website, both of which have been profitable and, in the latter instance, has raised millions of Euros in venture capital.

The Respondent now seeks to repeat the success of the student job search venture, or similar, but in France, and with an app for the purpose. The credibility of his choice of France is supported by his demonstrated business presence in France through Urban Massage France SARL, of which he is a director.

On the totality of the evidence, and on balance, the Panel finds no reason to doubt the credibility of the Respondent or to doubt his explanation of the registration of the disputed domain name as having been for the purpose of an app for his French student job search venture.”

It is no coincidence that a finding of legitimate interest on the part of the Respondent often translates to a Panel finding no evidence of bad faith registration or/and use. This is because Complainant’s insufficient evidence leaves a significant lacuna where the benefit of the doubt tends to favour Respondent. This is true even in cases where a higher standard exists for high volume registrants. For example, a search conducted on the website www.udrpsearch.com reveals that the online media company, Name Administration (BVI) have been involved in upwards of 50 domain disputes, with success in all but one.

These numbers demonstrate that high volume registrant + high volume disputes do not automatically mean that the Respondent is bound to lose its domain name in all cases. In fact, Respondent’s such as Name Administration (along with carefully selected legal representation), have made the most out of their unfortunate circumstances to build up a level of credibility in UDRP cases. The numerous cases filed against Name Administration have led to it becoming well-known among UDRP panels who have come to accept the company’s legitimate business structure.

Credibility in UDRP disputes can also work the other way, with a Complainant’s credibility being called into question when confronted with a request for Reverse Domain Name Hijacking (RDNH).

Factors which can affect a Complainant’s credibility in UDRP disputes include:

  • Providing misleading or incomplete information to the Panel (see; Tupelo Honey Hospitality Corporation v. Ritchie Taylor; Claim No. FA1705001732247), finding “The Panel finds that Complainant knew or should have known that it was unable to prove that Respondent registered the disputed domain name in bad faith.”)
  • Utilizing counsel who ‘should know better’ (see; Pet Life LLC v. ROBERT RIESS / blue streak marketing llc; Claim Number: FA1810001810870, finding; “Given PET LIFE’s trademark registration date and first use in commerce date being years after Respondent’s registration of <petlife.com>, Complainant –who is represented by competent counsel– knew or should have known at the time it filed the instant complaint that it would be unable to prove each of the three elements of Policy ¶ 4(a) necessary to prevail.”)
  • The manner and motive in which a complaint is filed i.e. following a failed acquisition (see; Bernina International AG v. Domain Administration (BVI) Case No. D2016-1811, finding; “In the Panel’s view, this is a classic “Plan B” case, i.e., using the Policy after failing in the marketplace to acquire the disputed domain name. This stratagem has been described in several earlier UDRP cases as “a highly improper purpose” and it has contributed to findings of RDNH”).

A trademark owner who is considering filing a UDRP complaint should not dismiss the role of credibility in its case. Trademark owners should file complaints confident that they have provided enough evidence to satisfy their burden. For example, although the second element only requires a Complainant to make out a prima facie case, more time should be spent on trying to anticipate the Respondent’s reply to ensure there are no surprises. The use of a pre-action enforcement notice to the registrant not only allows for possible resolution but also an insight into the merits of a registrant’s possible arguments.

Copyright is known to protect original works such as literary, dramatic, musical, artistic and other intellectual works. When a person creates original work, it is automatically copyrighted at the time of its creation. Copyright gives one an exclusive right to do or authorise another person to use, reproduce and distribute copies, perform or communicate in public, certain kinds of creative works. Copyright lasts, on average, 50 years after the death of its author for most creative works.

For a work to enjoy copyright protection, the creation must be both original and tangible. A simple idea in someone’s mind is not sufficient to give protection under copyright, as the idea must be expressed in a physical form.

In contrast, trademark is a mark, when used in trade, capable of being represented graphically, and which distinguishes the goods and services of one person from that of another. The coverage of a trademark is broader than copyright, as a name, symbol, word, sign, shape of a product, colour, sound or smell can be protected under trademark law.

The main requirement for a mark to be protected is to be distinctive and not generic in relation to the business for which it is used.

However, the question here is to know if brand logos can be protected under copyright or trademark. Logos are a complex matter, and the simple answer is that they can be protected both under trademark and copyright law.

In order for a logo to have copyright protection, it requires a sufficient level of creativity. As copyright cannot protect words, colours or simple logo designs, most simple logos do not have the required level of creativity and originality to be copyrightable.
Nevertheless, some artistic logos can qualify for copyright protection if it is considered as a piece of artwork, and separate from its use as a corporate identifier. In such cases, those logos can and are enforced using both trademark and copyright.

As an example, in the United States, the Digital Millennium Copyright Act (“DMCA”) gives the opportunity for copyright holders to enforce their right and send notices to remove any content containing copyrighted works from websites or social media pages. However, as there may be some confusion between copyright and trademark protection for logos, companies must be careful when relying on the provisions of the DMCA.

In the case CrossFit, Inc. v. Alvies, No. 13-3771, 2014 WL 251760 (N.D. Cal. Jan. 22, 2014), the Defendant, Jenni Alvies, launched a blog and created a Facebook page called “CrossFit Mamas”, where she posted exercise routines. The fact that Alvies used the term “CrossFit” came to the attention of the company CrossFit Inc. In order to stop Alvies using this name, the company sent a takedown notice to Facebook pursuant to the DMCA, requesting a takedown of her Facebook page. Later, CrossFit Inc. sued Alvies for trademark infringement, but Alvies counterclaimed, arguing that the company violated paragraph 512(f) of the DMCA. This provision provides that:

“Any person who knowingly materially misrepresents under [17 U.S.C. § 512] that material or activity is infringing (…) shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer (…) who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing.”

In other words, this section held that any person who sends a notice of claimed infringement with knowledge that such claims are false might be liable for damages. In the CrossFit case, the company sent the DMCA takedown notice asserting infringement of its trademark rights rather than its copyright. The Court held that Alvies suffered damage when the content was removed via an improper DMCA takedown notice and agreed that such notice, used for a trademark matter, may violate paragraph 512(f).

The conclusion here is that a DMCA takedown notice, whether used for shutting down websites or social media pages, should be used carefully and only to address copyright violations. As many logos do not have the level of creativity required to be copyrightable, brand owners cannot rely on the DMCA provisions if a person only uses a company’s name logo without authorisation.

The use of a company’s logo by a third party, however, gives legal protection under trademark law and brand owners can enforce those trademark rights. Social media platforms, such as Facebook, also have specific procedures to report trademark infringements. Ideally, the best strategy for companies is to seek protection of their unique brand logos under both laws and obtain trademark rights as well as copyrights.

Author – Caroline Valle
Safenames Legal

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.

Littleacornsforstering.com 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 (legal@safenames.net), 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

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