InterContinental Hotels Wins 1,500 Domain Names
InterContinental Hotels Wins 1,500 Domain Names in Largest WIPO Dispute
In the largest domain name dispute resolution decision to date, the World Intellectual Property Organisation (WIPO)’s arbitration centre transferred 1,519 out of a total of 1,542 disputed domain names to the InterContinental Hotels Group in January. Another ten names were refused transfer while the hotel group withdrew claims relating to 13 other domain names. The Panel found the Respondent had no legitimate interest in the domain names and had acted in bad faith.
The disputed domain names were all held by one registrant, a Daniel Kirchhof of Leipzig, Germany, who has over 70,000 domain names registered. All of the disputed domain names had a domain parking page with a headline for the website of, for example, “Hotel InterContinental Amstel” following by an image of five stars. There are tabs for “Homepage”, “Hotel offers”, “Hotel pictures” and “Surrounding pictures”. The websites were designed to make internet users believe they were visiting the website of the actual hotel. However they all linked to third party websites offering bookings at rival hotels as well as links to some InterContinental Hotels group hotels.
Domain names disputed included those from InterContinental Hotels, Holiday Inn, Crowne Plaza, Staybridge Suites, Hotel Indigo and Candlewood brands belonging to the hotel group. The dispute hearing was extremely large and unprecedented in the number of domain names it considered. However the WIPO Panel said that due to this large “number of disputed domain names, it would be procedurally efficient to deal with all matters in the one proceeding given the almost identical facts among them.”
The Panel agreed with many of the InterContinental Hotels complaints. Among the findings, the Panel found that almost all of the domain names contained terms that “were in some cases identical and in other[s] confusingly similar to trade marks held by the hotels group,” a key issue in such a complaint. The brand owner was required “to show that the name is identical or confusingly similar to terms that it has rights to; that the person who owns it has no rights to the domain name; and that it was registered and is being used in bad faith.”
The Panel also found the registrant had no legitimate interest or fair use in the domain names with the websites containing a mechanism for booking rooms in InterContinental’s hotels “using a third party booking engine. The websites also contain links to third party websites (or the Complainant’s own websites), and sponsored advertising which is likely to entitle the Respondent to receive commercial revenue and directs potential customers of the Complainant to websites of its competitors. This clearly constitutes commercial use of the disputed domain names without the Complainant’s authorisation.” The Panel also found there “is clear evidence of bad faith” in the registration of the domain names.
The Panel also decided that given the large number of domain names registered in itself was evidence the Respondent had acted in bad faith. “The fact that this proceeding has been brought in relation to over 1,500 domain names which contain the Complainant’s trade marks, makes it clear that the Respondent has engaged in a pattern of registering domain names in order to prevent a trade mark owner from reflecting their mark in a corresponding domain name. The Panel’s view is further supported by the fact that the Respondent owns a vast array of other domain names.” The ten names that were refused transfer did not contain the terms to satisfy the tests used by the Panel to determine the Respondent had no legitimate use of the domain names. The 13 domain names disputed that were withdrawn from the complaint by InterContinental Hotels as they had been deleted.
The case is one reason why trademark and brand holders should consider registering their domain names before cybersquatters do. Despite the seemingly quick and efficient manner in which this dispute was decided, it is possible for cybersquatters to do damage to a brand/trademark’s image before the legitimate holder of the domain name is able to get hold of disputed domain names.
To help prevent such disputes, brand owners and trademark holders should consider having a brand protection strategy that includes domain names. This could include registering all common spellings and mis-spellings of brands and products across a wide range of generic Top Level Domains (gTLDs - .COM, .ORG, .NET) and country code Top Level Domains (ccTLDs - .CN, .DE .UK
The full WIPO decision is available at: www.wipo.int/amc/en/domains/decisions/html/2009/d2009-1661.html
2010: the year of new Top Level Domains
This year will be the year of the new top level domains, and we wanted to use this opportunity to share our knowledge with you:
What are gTLDs? The Internet has seen tremendous evolution with the introduction of specific extensions such as .info, .mobi, and .asia to complement the .com. The creation of these extensions has helped companies to better define their Internet presence while allowing customers to more easily find the right products or services.
“New” gTLDs? Comforted by the success of those extensions, ICANN has decided to accept much more extensions including special-purpose ones such as generic terms or even brand names.
While the whole list and the candidates remain still unknown, there are some chances to see some capital cities (.berlin, .paris…) or categories (.music, .web…) to complement the existing TLDs.
Protecting your Brand online Far from a threat, this change could be a tremendous opportunity for your company! It would give your brand immediate recognition on the Internet: when your competitors are stuck with “http://www.myproduct.com” bring your customers to the instantly memorable “http://MyBrand”! Control your own Internet space and distribute domain names to all your subsidiaries, key entities… or even customers!
If you don’t want to own your own TLD, your brand will flourish in one or several of the new TLDs that are currently talked about: .bank? .health? .sport? .radio?
A team of Experts… At your Service Over the last ten years, we developed an expertise in the domain name Industry with a special interest on new gTLDs. Taking an active part in ICANN meetings since the first new extensions were announced in 2000, our experts can effectively inform you through our up-to-the-minute announcements as well as represent your interests in any of the numerous forums where ICANN seeks input from the Community.
The way forward 2010 will see several milestones that no Internet-focused can miss:
- ICANN has initiated a public comment period which allows small and large companies to express their concerns and opinions on new gTLDs and the way forward. You should be heard too and we can help!
- Following this consultation, ICANN will start an “Expression of Interest” period before the summer, where any and all entities willing to obtain a new gTLD will have to participate in the process and provide key information on the project: the Team can guide you every step of the way and ensure your application is ready in record time.
- Our team will bring you a large and diverse expertise and will accompany you from A to Z through your application, by filling in ICANN’s requirements and understanding the different processes
As the application deadline is getting closer, it would be quite useful for us to meet you so we can understand your needs and interests and explain the complete process in greater details.
Don’t hesitate to contact us directly so we can schedule an appointment at your earliest convenience. In the meantime we remain,
TLD February 2010 report
Welcome to E-Brand Services monthly update of news regarding updates to country code and generic Top Level Domains (ccTLDs and gTLDs).
.AU: In a battle over the domain name of the government minister responsible for telecommunications, the registrants of stephenconroy.com.au found it was helpful to read the rules prior to registration, particularly when the domain name is likely to be controversial.
.BG: In an online poll conducted by the Ministry of Transport, Information Technologies and Communications, Bulgarians said the characters "BG" and "BGR" were the most popular choices as Bulgaria’s proposed gTLD in Cyrillic. Two options were canvassed in the survey as “BG” in Cyrillic is visually very close to Brazil’s ccTLD .BR which could cause problems.
.COM: VeriSign announced that as of 1 July 2010 there will be an increase in the fees charged to registries for domain name fees for .COM and .NET as per its agreements with ICANN. The registry fee for .COM domain names will increase from $6.86 to $7.34 and the registry fee for .NET domain names will increase, from $4.23 to $4.65, increases of around seven per cent.
.CN: CNNIC, the registry for .CN domain names, announced changes to registration policies in recent months. The changes effectively limited registrations to businesses and effectively excluded private citizens from registering new domains. The new rules are meant to restrict online pornography however many view the changes as a means of clamping down on freedom of expression online. A review of the new rules is now taking place with the possibility of registrations by individuals becoming available again in the near future. CNNIC also required applicants to submit hard copy (paper) applications in addition to their online application as of December.
.CZ: CZ.NIC, the .CZ registry, decreased its annual registration fee for holding a .CZ domain as of 1 January 2010. The wholesale price for a domain registration will drop from the current CZK190 to CZK155, excl. VAT.
.EU: EURid, the .EU registry, now allows domain names to be registered using characters from all 23 official languages of the European Union. This means that registrants, for example, can use Greek or Cyrillic names like διαδίκτυο.eu or роуминг.eu. Other examples of what is allowed are the Polish ł, the Spanish ñ, the Danish ø, the French é and the Bulgarian л. During the first hour when registrations went live, 38,172 Internationalised Domain Names were successfully registered and ärzte.eu was the first IDN registered.
.FI: FICORA, managers of the .FI ccLTD, have reduced fees for the registration of .FI domain names. FICORA reduced the registry fees as of 4 January 2010 for the application, transfer or renewal. The new charges are €13 for one year, €36 for three years and €55 for five years. The number of .FI domain names registered increased by 20 per cent in 2009 to 225,625.
.FR: AFNIC, the .FR registry, announced .FR domain names will be available to French expatriates living outside of France in the first quarter of 2010, probably in March 2010. Under the changes any French national whose normal place of residence is abroad will be able to register a .FR domain name. 2009 saw the 1.5 millionth .FR domain name registered and registrations grew 25 per cent year-on-year.
.IE: Registrants of .IE domain names have been warned to be alert for scam letters from a company posing as an Irish internet registration body. The IE Domain Registry has warned that a company called Internet Register Ireland with an address in Germany has been sending letters asking recipients to sign a form to update their domain registration details at a cost of nearly €3,000 over three years.
.MADRID: The Spanish city of Madrid has entered the race for a new gTLD with a proposal to apply for .MADRID when ICANN begins accepting application for new gTLDs, probably later in 2010. .MADRID is aimed at helping developing the unique cultural aspects for the city.
.NL: SIDN, the .NL registry, have modified their Whois service with less information now available about each .NL registrant. The changes are designed to protect registrants’ privacy, as requested by the local internet community during the 2008 Domain Name Debate. Other changes to come about from the Domain Name Debate include registrars are no longer required to verify the identity of a prospective registrant before proceeding to register the relevant domain name. It is also now possible to reserve .NL domain names for a fee, meaning it is now possible to register a name without it being delegated. As of March 2010 there will also be a new Domain Name Registration system to make .NL registrations faster and simpler, and while the changes are of most benefit to registrars, registrants should see some slight benefits as well.
.NO: On 1 March 2010, Norid, the registry for .NO domain names, will increase the fees for registration and annual upkeep of .NO domains to NOK 60. The increase is caused by Norid’s need to lessen their deficit due to heightened demands for security and emergency preparedness. There will also be a new regular registration fee for domain transfers between holders (not between registrars) that will come into effect once a new registry system has been introduced.
.PARIS: The proposal to apply for a .PARIS gTLD when ICANN begins accepting applications for new gTLDs was officially launched online in December. The website, in French only,
.PT: The manager of the .PT ccTLD (FCCN - Foundation for National Scientific Computing) has enabled DNNSEC for the ccTLD. The DNSSEC standard consists of security extensions to the DNS protocol, thereby introducing security mechanisms that enable a number of the main problems in this area to be resolved.
.RU: There is now an English-language translation of the latest version of the terms and conditions for .RU domain name registration on the website of the Coordination Center for TLD RU as well as the terms and conditions for the Cyrllic domain .РФ.
.UK: Nominet, the .UK registry, who passed the eight-millionth .UK domain name registration milestone in November, have found UK consumers have a greater level of trust in .UK domain names with 77 per cent preferring to click on a .UK search result over a .COM result. As part of their efforts to keep the ccTLD more secure, Nominet have announced a number of changes including:
- changes to the acceptable use polices for our registrar systems in order to protect the stability of our domain name registration systems
- following discussion and approval by their Policy Advisory Body Nominet have released two new functions to provide registrars with the appropriate tools to take action against illegal online activity at a domain name level – a phishing feed and an investigation lock
- the phishing feed is a service that provides registrars with information about domain names on their account that are suspected of being involved in phishing
- the investigation lock locks domain names by removing the name from the zone file and preventing changes from being made. This means that any web site or email associated with the domain name will no longer be available and is only to be used when there is credible evidence of suspected illegal activity carried out using the domain name. In other .UK news, Nominet received an instruction from the Metropolitan Police’s Central e-Crime Unit (PCeU) to take down around 1,200 CO.UK domain names in December that have been under investigation for criminal activity. The order was part of Operation Papworth where the PCeU was targeting websites run by organised criminal networks that purported to sell designer items - clothes, jewellery and electronic goods. Many of the sites involved supplied counterfeit goods or in some cases simply failed to supply any goods to the consumers who placed orders.
80% tax exemption on IP
Only 5.72% is the tax rate on income generated by your trademarks, domain names, patents, designs, models and software in Luxembourg. This initiative from the Luxembourg government aims at promoting the development of intellectual property and new technologies in the country. So, here are the facts to help you benefit from a unique, attractive tax advantage.
Background of the new IP law . December 21, 2007 - Bill 5801 was adopted to provide an 80% tax exemption for some intellectual property rights revenue, as defined in Article 50bis.
. December 24, 2007 - VAYTON Brand Capital was created to assist companies worldwide to develop and manage brands in Luxembourg.
. December 19, 2008 - Paragraph 60a, under Article 50bis, was introduced as an amendment declaring domain names as eligible intangible assets.
. March 5, 2009 - The Luxembourg tax administration published a clarification that precisely defined the conditions for granting a tax exemption.
What Kinds of Intellectual Property Apply? Trademarks, domain names, patents, models and designs as well as copyright on software may be granted up to an 80% tax exemption.
What Are the Requirements for Qualifying? The two main conditions are 1. Intellectual Property was created or acquired after December 31, 2007 2. Intellectual Property is utilized or licensed by a Luxembourg company.
Who Benefits from the Tax Exemption? New companies and businesses that regularly launch new products, Brand owners and domain names owners, software designers, architects or franchises with international development operating within Luxembourg benefit from this new law.
With this new IP law, VAYTON brings a unique tax advantage for your company.VAYTON can ensure the identification, establishment and management of your intellectual assets to increase their value.
New ICANN TLD’s: .brand
News 1st of November 2008
In a major change to the domain name system, the Internet Corporation of Assigned Names and Numbers (ICANN) has announced a draft plan (or Guidebook) that will allow for applications for new generic Top Level Domains (gTLDs) and is seeking comment from interested parties.
"Since ICANN was founded 10 years ago, one of the foundational principles has been to support competition and consumer choice in generic top-level domains. That competition is meant to promote innovation and enhance user choice and satisfaction" said Dr Paul Twomey, ICANN’s President and Chief Executive Officer.
"The Internet has produced great openness and innovation that has led to changes few of us imagined. The effect of opening up the top-level of the domain system will enable more innovation and entrepreneurial applications" he said.
Emergence of new internationalised domain names Currently there are 21 of these gTLDs, such as .com, .org and .info, all of them using Roman (or English) characters. Groups already expressing an interest in applying for new gTLDs include those for .berlin, .paris, .nyc (New York City), .cym (Cymru/Wales) .car and .sport, among others.
The addition of non-Roman characters (or internationalised domain names - IDNs) will mean that not only will new gTLDs be available using non-Roman characters, but existing gTLDs and ccTLDs (country code Top Level Domains) will also be able to add these.
“There are 1.5 billion people online and billions more coming. The majority doesn’t speak English. Opening up domain names in this way means a whole new way for people to express themselves. The potential for innovation and diversity is huge” said Paul Levins, ICANN’s Executive Officer and Vice President Corporate Affairs.
Rights Protection Mechanism There has been a long debate involving several of the proponents of new gTLDs over the last few years that has seen many discussions at ICANN meetings around the world. Some of the controversial issues have involved the possibility of offensive gTLDs, protection of brand names and trademarks, dispute resolution procedures and how geographic names will be considered.
These controversial issues are addressed in the Guidebook. In regards to what could be considered offensive gTLDs, third parties will be able to object to proposed TLDs that are racist, sexist or otherwise offensive. Geographic gTLD names that are a country, territory, county or state will require the support from a relevant government or authority, as will applications for a city gTLD unless the name is to be used only to represent a generic term or brand.
Brand protection is another key issue, with all applications required to develop a proposed Rights Protection Mechanism. This is to ensure proposed gTLDs do not infringe upon the existing legal rights of others that are recognised or enforceable. Further, that brand names and trademarks are not abused in the registration process once the approved gTLD is operational.
Those eligible to apply are any established corporation, organisation, or institution that is considered to be in good standing while applications from individuals or sole proprietorships will not be considered.
Application for Open or Community gTLDs When applying, the guidebook says applicants would be required to designate whether they are applying for an open or community gTLD. Open gTLDs are somewhat flexible in their use, as long as the applicant is an established corporation, organisation or institution. A community gTLD needs to be operated for the benefit of a defined community and have the support of that community.
The proposed application process will consist of a gTLD evaluation fee of US$185,000 and the completion of the application form using ICANN’s TLD Application System (TAS) and another fee of $100. The application fee is designed to be cost/revenue neutral and factors in costs already forgone, future processing costs and legal expenses that are significant and which ICANN believe would be a large drain on their budget. Applicants will also be required to demonstrate they have the technical competence to run a registry.
Where there is two applications for the same, or similar, character string, ICANN proposes to resolve this through an auction process if no other settlement or agreement can be made between the parties.
To explain these proposed new rules, ICANN’s Draft Applicant Guidebook, over 200 pages, is available to enable interested parties to make comment. The Guidebook will be made available in Arabic, Chinese, English, French, Russian and Spanish.
To encourage public participation and comment in the process, ICANN have developed a public comment page to collect input on the Draft Applicant Guidebook for new gTLDs. It is also important to note that all materials are in draft form during this public comment and review process, which will last for at least 45 days till early December.
Following this Draft Applicant Guidebook, a final guidebook will be issued in the first quarter of 2009 with an application launch period in the middle of 2009.
More information, along with the Guidebook, is available from http://icann.org/en/topics/new-gtld....
Domain name statistics
Domain Name Registrations Continue to Grow Despite Financial Crisis
There are currently in excess of 174 million domain names registered around the world, with the number growing by around 19 per cent per year, according to VeriSign’s latest Domain Name Industry Report.
Domain names were developed as an easier way of remembering a unique identifier on the internet, for example an internet address, than a series of numbers that form an IP address. And the more easily remembered or more recognisable domain name, generally the more valuable it is.
The first domain name registered was symbolics.com, registered back in March 1985, and it took around two and a half years to register the first 100 domain names.
Growth has been at an exponential rate since then. Over the last two years the total number of registered domain names has increased around 45 per cent according to the VeriSign report, growing by around 54 million. But there are signs this rapid increase could be tempered by the current global financial crisis with registrations growing only five per cent in quarter three (July to September). Total year-on-year registrations grew 26 per cent. This compares to a somewhat slower growth for .com and .net with a two percent quarter on quarter increase and 16 percent year on year growth.
Of the 174 million registered domain names, 69 million are for the approximately 230 country code Top Level Domains (ccTLDs) such as .de (Germany) and .uk (United Kingdom). The remaining 105 million were for the 21 generic Top Level Domains (gTLDs) such as .com and .net.
While figures for gTLDs are not exact, there are around 78 million .com domain names registered, around eleven million .net domains and around 7.25 million .org domains. The largest ccTLD by registrations, .cn (China), has now easily become the second most popular TLD with 13,337,889 registrations as of the end of November. This was a massive increase of 422,152 in just one month, a figure higher than many TLDs have as a total figure, and an increase of 4,878,715 (a 58% increase) over the last 12 months. The next most popular ccTLDs with total registrations (as of 17 December unless otherwise noted) are:
.de - 12,469,349 .uk - 7,277,705 (end November) .nl (The Netherlands) - 3,187,046 .eu (European Union) – 9,984,520.
Statistics for this article came from:
VeriSign Domain Name Industry Brief – December 2008 – https://press.verisign.com/easyir/c......
CNNIC – http://www.cnnic.net.cn/en/index/in...
Denic – http://www.denic.de/de/domains/stat...
Nominet – http://www.nominet.org.uk/intellige...
SIDN – http://sidn.nl/.