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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 ([email protected]), 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 2Dprinting.sucks, or else your Kickstarter campaign for new-and-improved sex toys has broken 10k and you want to spread the word with youroldvibrator.sucks—no matter your niche market, you can gather a whole lot of interest and information with a creative domain name.
Failure.sucks, 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 poorconnection.sucks, or mycurrentplan.sucks to direct customers towards better data packages. Run a food delivery service? Coldfood.sucks could do the trick. There are many ways to identify with your customers’ struggles while propelling them to less-sucky solutions.
Losingcustomers.sucks—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 badbreath.sucks; Axe, already notorious for its viral campaigns, could pull it off once more with beinglonely.sucks. Selling on-the-go stain remover? Doinglaundry.sucks 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.
Boredom.sucks, 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 thepatriarchy.sucks, or you want to raise legal fees defending immigrants affected by the president’s dubious executive orders with islamophobia.sucks, a .SUCKS domain gets straight to the heart of the issue. Thestatusquo.sucks, 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 inefficiency.sucks 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 / rawpixel.com, Shutterstock / Elnur, Flickr / Liz Lemon

The Uniform Domain Name Dispute Resolution Policy (UDRP), which came into force in 1999, is still the preferred route for domain name dispute resolution. This
inexpensive and expedited procedure permits parties to seek the transfer or cancellation of domain names which are not only identical or confusingly similar to a trademark, but which have been registered and used in bad faith.

The World Intellectual Property Organisation (WIPO), which administers UDRP proceedings, states that it has processed more than 30,000 cases since its inception, encompassing over 58,000
domain names. In 2015 alone WIPO administered 2,754 cases – a 5% increase on the previous year, which was partially triggered by the emergence of new generic top-level domains (gTLDs) in 2013.

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.

There is no doubt that the UDRP offers many benefits to trademark owners, with owners prevailing in approximately 90% of all cases; but does it go far enough in addressing the ever-pressing issue of cybersquatting? Is there a need for a complete overhaul of the UDRP or can we rely on the current consensus that has been established over the years? This chapter addresses some of these questions, examines alternative rights protection mechanisms and considers whether lessons can be learned from other self-administered dispute providers.

Alternative rights protection mechanisms
The UDRP was designed to tackle the unique circumstances resulting from a rapidly growing domain name system, while focusing on a narrow class of cases: clear cases of abusive registration and use.

With the launch of new gTLDs in 2013, the Uniform Rapid Suspension (URS) procedure was introduced in order to provide rapid relief to rights holders for clear-cut cases
of infringement. The mechanism, which is administered by the National Arbitration Forum (NAF) and the Asian Domain Name Dispute Resolution Centre, promised a lower cost ($375) and a faster resolution for trademark owners who could prove their cases with clear and convincing evidence. However, the URS was not designed to replace the UDRP, but rather to complement it by allowing rights holders to suspend the offending domain name for the remainder of the registration period, rather than seeking transfer of the domain.

The URS has better benefits than the UDRP when dealing with the most egregious forms of trademark infringement (eg, the online sale of counterfeit goods). Further, in such cases an affected rights holder will want the issue resolved quickly, so the URS – which can resolve issues quickly (within 12 to 18 days) – may be the more viable option. Moreover, the URS remedy of suspension rather than transfer or cancellation may be a better alternative for rights holders which are wrestling with the expense of ever-increasing domain portfolios. Although cancellation requests under the UDRP have seen a slight increase over the years, this has never been a popular remedy among rights holders, as it risks the domain name falling back into the wrong hands once it is released for general registration. On the other hand, suspension, which applies only to new gTLDs, allows rights holders to balance the cost between enforcement and monitoring. Trademark owners can limit the recovery of domain names which are desirable through the UDRP while using the cost-effective URS mechanism to suspend and monitor less
desirable domain names.

Only time will tell whether the URS is a valuable mechanism for rights holders. At present, many still question whether it complements the UDRP. WIPO, which has not implemented the URS, has called it “relatively overburdened”, suggesting that the process is trying to do “too much for too little”. This raises the question of whether the UDRP itself could be adjusted to meet the demands of the expanding domain name system.

Can lessons be learned from self administered dispute providers?
Although many countries which provide alternative dispute resolution services have adopted the UDRP, some administer their own policies. One example is the award winning UK Dispute Resolution Service (DRS) administered by NOMINET, the UK internet registry that operates the ‘.uk’ extension.

The DRS not only allows for the informal mediation of a dispute before the appointment of an expert panel, but has also implemented a default-based model, allowing complainants to request a summary decision at a reduced cost in the absence of a filed response. The summary decision is composed of a simple tick box process to confirm whether the complainant has successfully established its case.

NOMINET’s stats reveal that of the 728 cases filed in 2015, 169 were summary decisions.

The lack of written analysis of procedural matters, party contentions and findings addresses WIPO’s initial concerns regarding the URS, whereby expert lawyers – many of whom work in law firms – must review complaints and provide comprehensive decisions for a relatively small fee.

A large number of UDRP cases go undefended. According to the NAF, of the 1,836 cases filed with it in 2014, the respondent failed to submit a formal response in 56.9% of cases. Therefore, rights holders which file large numbers of complaints would undoubtedly benefit from such a model.

Call for mediation
The call for online mediation as part of the UDRP process is seen as a commercially sensible solution for both parties. The statistics of dispute resolution providers which provide informal mediation as part of their procedures demonstrate that online UDRP mediation should be given serious consideration. Again, NOMINET offers a period of informal mediation after the parties’ submissions have been made under the DRS. In 2014, of the 728 cases filed under the DRS, 160 were settled through mediation. This reduced the length of time that it took to manage the disputes by an average of 44 days, as the amount of complaints which proceeded to the appointment of an expert decreased.

The free mediation process is confidential and conducted on a without-prejudice basis with the assistance of a trained mediator, allowing the parties to explore all options freely and even to reason on the strengths and weaknesses of each other’s cases.

With the limited remedies and narrow class of cases which fall under the UDRP, mediation could also allow for the sort of relief that would not normally be available, such as the resolution of domain name disputes involving parties with existing or past business relationships.

Multiple complainant class complaints UDRP cases such as those involving infamous registrant Yoyo Email Limited illustrate the need for multiple complainant disputes. To date Yoyo, which attracted controversy over the registration of more than 4,000 domain names comprising thirdparty trademarks together with the ‘.email’ gTLD, has been involved in over 50 UDRP and URS cases, with all but one URS case being decided in favour of the complainant. In all cases the alleged abuse and conduct of the respondent were the same; in this type of case, where rights holders have a common grievance against a particular respondent, an express provision for consolidated complaints would be highly beneficial.

The existing UDRP rules make no express provision for multiple complainants to bring proceedings under a single complaint, although for some time UDRP case law has provided principles governing the question of multiple complainant disputes. However, regarding proceedings brought in the Czech Arbitration Court (CAC), Article 4 of the CAC’s UDRP Supplemental Rules expressly provides for proceedings to be brought by multiple complainants. Article 4 designates such proceedings as a class complaint, provided that:

  • the class complaint is based on legal arguments applicable equally, or substantially in the same manner, to all the disputed domain names;
  • the person representing several different complainants joined in the class complaint is authorised to act on behalf of each of the complainants; and
  • the panel orders the transfer of any disputed domain name only to the individual complainant on whose behalf such transfer was requested in the class complaint.

Complainants have repeatedly shown that they are willing to unite their resources and efforts to tackle the issue of cybersquatting (see Fulham Football Club (1987) Limited v Domains by Proxy, Inc, WIPO Case D2009-0331). Giving rights holders the ability to file or join class complaints where the respondent has engaged in common conduct which affected their trademark rights could lead to the more streamlined version of the UDRP for which many trademark owners have called.

Revisiting the UDRP’s conjunctive requirement – ‘and’ or ‘or’?

The UDRP’s conjunctive requirement of demonstrating both bad-faith registration and bad-faith use has been the subject of debate for many years among panellists. Where the majority have interpreted this element of the policy as having two requirements, further limiting the UDRP’s already narrow scope, a number of panellists believe this interpretation to be incompatible with the UDRP objective of tackling cybersquatting.

Cases such as Guru Denim Inc v Abu-Harb (Case D2013-1324, ‘truereligion.com’) highlight the split rules for this element of the policy and provide some justification for adopting a non-conjunctive interpretation.

In Guru Denim Inc the complainant filed against the respondent for the domain name ‘truereligion.com’. The respondent registered the domain in 1998 to promote Islam, four years before the complainant created its True Religion brand.

In 2009 the site began receiving over 1,000 hits a day due to the popularity of the complainant’s True Religion brand, prompting the respondent to take unfair advantage and monetise the traffic through Google’s Adsense programme. It later emerged that the respondent had offered to sell the domain name for $380,000.

The majority panel held that while there could be evidence of bad-faith use in these circumstances, the complainant could not demonstrate that the domain name had been registered in bad faith as it had been acquired years before the brand came into existence. However, the dissenting panellist stated: “I defy any panellist to show me evidence from any portion of the legislative history or from any other provision of the Policy that would indicate that the drafts persons or the provisions of the Policy as drafted intended that a registrant could use a domain name to target a trademark and profit from its goodwill, so long as the time that the domain name was registered, the registrant had no intention of doing so.”

The case emphasises the limitations of the UDRP and the possible loopholes that can be exploited. Domain owners would argue that the conjunctive requirement offers a vital level of protection in an already biased process in favour of rights holders. On the other hand, rights holders might question whether changes to the bad-faith element would unfairly undermine a domain name owner’s interests. After all, a legitimate domain owner would usually be able to defend the legitimacy of its registration and use under the second element of the UDRP, which discusses rights and legitimate interests.

The majority of national dispute resolution procedures which provide their own variations of the UDRP (eg, Australia’s ‘.au’ Dispute Resolution Policy (aUDRP)) have abandoned a conjunctive requirement in favour of the either/or model – namely, that the respondent either registered or subsequently used the domain name in bad faith. The UK DRS Policy has gone one step further in addressing this controversial subject by instead adopting the term ‘abusive registration’. As defined in Paragraph 1 of the DRS, ‘abusive registration’ covers situations
where a domain name:

  • was registered or otherwise acquired in a manner which, at the time when the registration or acquisition took place, took unfair advantage of or was unfairly detrimental to the complainant’s rights; or
  • has been, or is likely to be, used in a manner which takes unfair advantage of or is unfairly detrimental to the complainant’s rights.

This language gives expert panels broad discretion as to what constitutes abuse and allows the complainant to show that the abuse occurred at any time during the life of the
domain name.This scope covers domains that are inherently abusive and is further emphasised in the DRS, which recognises and allows the presumption of abusive registration if the complainant proves that the respondent has been found to have made an abusive registration in three or more DRS cases in the two years before the complaint was filed, irrespective of how the domain name is being used. Although this does not result in the automatic loss of the domain name for the respondent, it weakens its position quite significantly.

Many have questioned the morality element of the DRS’s automatic assumption of guilt or the ‘three strikes’ rule. Nevertheless,
it places an ongoing responsibility on domain owners to ensure that their registrations areall legitimate and that, where possible, issues are settled before proceedings. A domain owner with a large portfolio of domain names is less likely to risk proceeding to a DRS where there is a high probability of losing if it knows that decision will count against it in the near future. The provision not only encourages communication between parties, but also attempts to provide a clear distinction between legitimate domain owners and cybersquatters by labelling those who continually show blatant disregard for the rights of trademark owners. The DRS has successfully provided an alternative approach to the much-debated bad-faith schools of thought. Rather than a conjunctive or disjunctive view, as debated under the UDRP, perhaps the DRS’s all-encompassing concept of abusive registration requirement better addresses the range of circumstances that arise in disputes.

Comment
As discussed here, rather than relying on the creation of new rights protection mechanisms, lessons can be learned from self-administered dispute providers. The adoption of a default model and a consolidated complaint provision may provide the type of streamlined process that the URS was intended to provide, without the complexity. Voluntary mediation could reduce costs and encourage broader types of resolution, while clear language to reflect an evolving domain name system may provide the consistency that the UDRP needs.

While it is safe to say that the UDRP is an imperfect administrative process which would benefit from some fine-tuning in certain areas, the volume of cases filed since its inception demonstrates that it is functioning as the drafters intended. The UDRP will remain in effect for the foreseeable future, but minor changes to the process could further improve its effectiveness as a protection mechanism for rights holders.

Fraudsters are at it again. There is currently a counterfeit ‘renewal’ email circulating informing domain registrants that their domains(s) is expiring for a search engine listing, domain name listing, and/or SEO listing services.

How do they do this? Fraudulent companies “mine” the WHOIS database and then use the information they gather to send counterfeit emails (in this case, renewal emails) to ‘scam’ unknowing domain registrants into renewing services that do not actually exist. They make the message so confusing that it often works because registrants are lead to believe that their domain(s) is expiring.

Our message? Be vigilant and know that your Safenames renewal emails will only ever come from us–and this is likely the same for all domain registrars. If you have any questions about this post, please contact Safenames in the UK at +44 1908 200022 ([email protected]) or in the US at +1 703 574 5313 ([email protected]).

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