The Paris Court of Appeal has decided that while prior continuous use of a term as part of a company name, a trade name and signage could constitute a valid defence to a claim for trademark infringement, it could not justify registration and use of a .fr domain name containing that term (Hogan Lovells)

The UK High Court has ruled that there is no de novo court review of .uk domain name dispute resolution procedure decisions.

According to the decision of Mann J in Michael Toth v. Emirates, the issue of abusive registration of a .uk domain name may be determined only by an expert appointed under the Nominet Dispute Resolution Service (DRS) Policy.  That is to say, there is no independent cause of action for ‘abusive registration’ that may be pursued in a UK court.

The consequence of this ruling is that an unsuccessful party to a Nominet DRS action does not have an entitlement to seek a de novo review of the action by a UK court.

Details of the 1930 applications received in the first round allocation of new gTLDs show that nearly one-half of all applications are from North America, and one-third are from Europe. Of the 42 applicants from Australia, the most common industry sectors are banking/finance and higher education.

230 new gTLDs are the subject of competing applications by 751 applicants. The most popular applied-for gTLD is <app>, with 13 applicants. ICANN has posted a list of the applied-for gTLDs, together with descriptive statistics on the applications.

The US Court of Appeals for the Fifth Circuit has recognised that a domain name transfer achieved though a successful action under the UDRP can be overturned under the ACPA where the evidence in the UDRP action was misleading.

In ISystems v. Spark Networks, the plaintiff sought to overturn a UDRP decision in which its domain name jdate.net was transferred to the defendant, the owner of the JDATE trademark and the domain name jdate.com. The plaintiff relied on 15 U.S.C. § 1114(2)(D)(iv), which provides that if a registry transfers a domain name “based on a knowing and material misrepresentation by any other person that a domain name is identical to, confusingly similar to, or dilutive of a mark”, that other person is liable for damages and injunctive relief, including retransfer of the domain name to the original domain name registrant, is available.

The plaintiff claimed that the defendant’s evidence in the UDRP action had been deceptively edited so as to falsely represent that the plaintiff’s use of the domain name was commercial.  The Court of Appeals found that such editing had occurred, and that it amounted to a material misrepresentation that had influenced the decision of the UDRP arbitrator. It therefore remanded the case to the District Court to proceed on the plaintiff’s § 1114(2)(D)(iv) claim.

A record 2,764 cybersquatting cases covering 4,781 domain names were filed with the WIPO Arbitration and Mediation Center in 2011. These filings, made under the ICANN Uniform Domain Name Dispute Resolution Policy (UDRP), represent an increase of 2.5% and 9.4%, respectively, over the previous highest levels in 2010 and 2009, WIPO reported.

The Ontario Court of Appeal has ruled that a domain name constitutes personal property. As a consequence, an Ontario court has jurisdiction to grant declaratory relief that would circumvent a UDRP action.

The domain name registrar Tucows acquired the domain name “renner.com” when it purchased a portfolio of more than 30,000 surname domain names from Mailbank, Inc. The Brazilian department store retailer Renner brought a UDRP action against Tucows seeking transfer to it of the domain name. Tucows filed an action in the Supreme Court of Ontario, seeking declarations that it had rights or legitimate interests in the domain name, and that it had neither registered nor used the domain name in bad faith – declarations which would preclude Renner from succeeding in the UDRP action. The UDRP panellist terminated the UDRP action as a result of Tucows’ court filing. The Canadian court at first instance ruled that it did not have jurisdiction to hear Tucows’ claim for the declaratory relief. The Court of Appeal overturned that decision, finding that it did have jurisdiction because a domain name is personal property in Ontario.

The Names Policy Panel of the .au domain administrator, auDA, has recommended the retention of the eligibility requirements for registration of a .au domain name. In its report to the auDA Board of its review of the policy framework underlying the allocation and use of domain names in the .au domain space, the Panel noted that the overwhelming majority of public comments were in favour of retaining the current policy – i.e. that registrants must be Australian or registered to trade in Australia. While acknowledging that the Internet is a global marketplace, the Panel concluded that .au should remain restricted to Australian entities and individuals. In short, the Panel confirmed the principle that “.au” means “Australian”.

The owners of the wine geographical indication “Champagne” failed in an action under the UDRP to win the domain name “champagne.co”. Although the WIPO panellist recognised that the Complainant had rights under French law to “champagne” as an appellation of origin, these rights did not equate to rights in a “trademark” for the purposes of founding an action under the UDRP. In a detailed decision, the panellist explained that the geographical indication “Champagne” does not, per se, distinguish the wine of one champagne producer from the wine of another, and so does not fulfil the fundamental function of a trademark. Furthermore, the drafting history of the UDRP shows that the framers of the Policy did not intend it to apply to geographical indications per se. This position is different from that which pertains under the dispute resolution policies for the ccTLDs .uk, .fr and .be.

The United States Association of National Advertisers has written to ICANN objecting to introduction of the new TLD program. ANA claims that the program “is economically unsupportable and likely to cause irreparable harm and damage”, and “violates common sense”. According to ANA research, there is no consensus support for the program among businesses, consumers, academics, researchers, agencies or government. ANA requests that ICANN abandon the program – or, at the very least, justify any changes by sound research and through a true consensus. (ANA)