With all the confetti, balloons, and tacky 2016 sunglasses becoming a fading memory, I’d like to talk about what 2015 has meant for domain name disputes in new gTLDs.
If you’ve seen one of our recent webinars, you know that new gTLDs now make up about 15% of all domain name disputes. This is up from just over 4% for 2014, the year in which the first new domains went live. While these numbers show that new domains are far from replacing legacy TLDs (.COM, .ORG., .NET, etc.) in UDRP disputes, they do indicate that cybersquatters are setting their sights on the new extensions. As expected, the abuse suffered by the legacy domains is now actively showing up in the new spaces.
Domain Name Disputes Over Famous Trademarks
One of the first things that jumps out from 2015 is the number of well-known brand owners who found themselves pursuing identical copies of their trademarks in TLDs that are highly relevant to their business.
For example, the domain Schwinn.bike was originally registered by someone who posted a non-commercial site displaying photos of favorite bicycles from his Schwinn collection. This page now redirects to the company’s .COM page but there is no reported UDRP case – I can only assume that the parties reached a negotiated settlement. Other cases, which did go to a decision, include VirginGalactic.space, Roche.healthcare, DairyQueen.restaurant, and Cinnabon.menu.
A Notorious Respondent
Another noteworthy issue that started in 2014 but picked up steam in the last year is the onslaught of cases against a single owner name Giovani Laporta / Yoyo Email. According to its own statements, the company registered thousands of domain names in the .EMAIL TLD that copy famous, global brands. The stated goal of this effort is to offer a more secure and trackable email service, using the brands merely for an addressing function. However, in the nearly 70 UDRP and URS cases that have successfully been filed against the company, Panels have routinely held that customers would recognize these famous brands and “Respondent fails to recognize that though his concept for a business may be legitimate, he cannot build his business on the back of another’s rights.” I expect these cases to continue, although Mr. Laporta has stated his intention to fight this matter through the courts (this has not yet materialized despite his having negotiated one consent judgment with a UK company).
High Concentrations of Activity in Select gTLDs
There has been quite a lot of enforcement activity in the .XYZ TLD, but this is not surprising for two reasons:
- The registrar engaged in a practice of giving away domains for free early in 2015, and
- Google’s new parent company “Alphabet” adopted Alphabet.XYZ as its domain name, thus propelling the popularity of the domain.
To date there have been well over 100 cases filed against .XYZ domains with not a single denial thus far.
Other new gTLDs that have seen quite a bit of enforcement action include .WANG (a popular surname and also a transliteration of the word, “网”, a Mandarin character meaning “website” or “portal”) with 39 cases; the .COMPANY TLD with 29 cases; and the .ONLINE TLD with 19 cases.
Cybersquatters are finding fresh pastures in which to perpetuate some of their same old schemes – not unanticipated in the roll-out of the new gTLD program. However, it does show that brand owners must maintain their vigilance and become more sophisticated in how they approach both their own defensive domain portfolio and their anti-cybersquatting enforcement efforts.
A New Year for New gTLDs
As new cases are reported in this new year, I’ll continue to provide commentary on those of interest and alert readers to any noticeable trends that emerge. Until then, good luck cleaning up the confetti and getting focused on the journey ahead as we head into another year of the ever moving and insane domain name train.
- How Fast Flux DNS is Hurting Brands and How It Could Affect UDRP - October 19, 2017
- Is Nominative Fair Use of Domain Names OK For a Business That Is Related to a Brand? - May 15, 2017
- How Did 2016 Domain Name Squatting Disputes Expand UDRP Thinking? - February 23, 2017