LAW PUNDIT Thursday, January 19, 2006 1/19/2006 05:48:00 PM [Home]
Cybersquatting of .eu Domains - Apply US principles?
EURid, the European Registry of Internet Domain Names for the .eu domain, now has a WhoIs page (available in all 20 EU languages) at EURid- Domain Status, where domain names can be entered in the searchbox to see if they are available for registration or to find out who has registered a particular domain name.
Here we already see room for improvement at EURid since instead of stating "Please enter a domain name" they have the message "You did not enter a domain name" which is rather a foolish greeting for someone just landing at that page.
If, for example, one enters the term "whois" or "Europa" in the search box, then one is informed that the domain is registered and after entry of the validation text one can click the button "details" to get registration information.
If, for example, one enters the term "hotel" and the validation text one can then click either the "sunrise" or "variants" button. If one clicks "sunrise" then one can view all of the applications filed for the domain hotel.eu (currently 123 applications). One is informed that the status of this domain name is "APPLICATION PENDING".
If one clicks "variants" one gets a list of domain names containing the word "hotel" for which applications have been filed, for example, "airporthotel".
EURid lists only the first 25 variants, so that for the entry "hotel" this currently runs from "51hotels" to "alofthotels" and the rest of the alphabet is missing. This is definitely in need of correction.
If one enters names such as Germany, Deutschland, or Hamburg, one gets a message that the domain name is "RESERVED", but if one enters London there are 5 applications pending for london.eu, and, similarly, 3 applications pending for paris.eu.
How this could happen is a mystery to us since it would seem that the city names of London and Paris would be reserved to the cities.
If one enters well-known trademarks such as Sony or Cocacola one sees several applications.
If our checks are any indicator, many institutions that should be filing for .eu domain names are not doing so in a timely fashion. If this leads to legal trouble down the road, then institutions are themselves at fault, relying on their already established .com or similar domains, rather than filing for a comparable .eu domain.
Other sample searches:
europeancommission.eu is "reserved" but
eucommission.eu is listed as "available"
235 applications have been made for the domain sex.eu
97 applications have been made for the domain travel.eu
54 applications have been made for the domain news.eu
44 applications have been made for the domain sport.eu
28 applications have been made for the domain sports.eu
11 applications have been made for the domain microsoft.eu
11 applications have been made for the domain omega.eu
9 applications have been made for the domain yahoo.eu
7 applications have been made for the domain google.eu
6 applications have been made for the domain time.eu but Time Warner Limited seems to be on the ball and has registered properly and first for this name.
3 applications have been made for the domain cnn.eu
Based on the time stamps of the applications, which in some cases differ only by seconds, the registration process may have given an advantage to faster servers (?) or those located closer to Belgium (?), so we already see some pre-programmed lawsuits in the making over EURid's granting of domain names through the first-come first-served process as regards the earliest applications, all of which of course were intended to be made electronically at the starting gun of the .eu domain registration process, i.e. just as fast as any possible competitor.
Some institutions seem to have made multiple applications to try to ward off this problem and some names seem to have been grabbed in grand style by cybersquatters.
This problem has already been raised in the media, as reported by The Herald in Scotland (Big names grab their domains to thwart the internet squatters), a Dec. 9, 2005 article by James Morgan and Sharon Flaherty (p. 7) where they write:
"Already, Glasgow.eu and Edinburgh.eu have been reserved by a Dutch company, Traffic Web Holding BV, which has filed applications for scores of European cities, including London, Rome and Paris. The Netherlands firm has registered trademarks under the names "Gla&sgow" and "Edin&burgh", apparently trying to exploit what it sees as a loophole in the "prior right" rule."
Indeed, Traffic Web Holding B.V. has apparently filed for at least 805 domains, listed here, a list which includes other firms which have also filed for numerous domains. Of course, these firms are just using entrepreneurial energy to try to take advantage of what may be a loophole in the EURid guidelines. What are their chances of success?
Although there is no clear information available at the moment as to the exact legal basis for their applications, it appears that some of these firms may have filed trademarks for names in the form such as "domain.eu" and are basing their applications on such alleged trademarks. We do not think that they have much chance of being recognized as trademarks for registration purposes if EURid applies the same basic principles outlined in U.S. Patent and Trademark Office (USPTO) Examination Guide NO. 2-99 of September 29, 1999, covering "MARKS COMPOSED, IN WHOLE OR IN PART, OF DOMAIN NAMES", an examination which of course is not binding for .eu domains, but which nevertheless points to the legal principles involved and which the EU will surely apply in a similar manner.
As stated there:
"When a trademark, service mark, collective mark or certification mark is composed, in whole or in part, of a domain name, neither the beginning of the URL (http://www.) nor the TLD [our note, i.e. the .eu part] have any source indicating significance. Instead, those designations are merely devices that every Internet site provider must use as part of its address."
Hence, in the USA:
"If the domain name is "XYZ.COM," the term "XYZ" is a second-level domain and the term "COM" is a TLD."
The same applies to the .eu domain in the European Union. It is a TLD. Based on the principles outlined by the USPTO, it will surely not be permitted to claim a domain in the form "domain.eu" as a mark for domain registry purposes and thus these cybersquatting attempts will surely fail.
A report on domain developments is also found at Anchovy - domain name news from Lovells.
All of these problems with .eu domain registrations were foreseeable and it is hard to understand that the EU has not acted in advance to correct the problem. A simple statement that marks in the form "domain.eu" are unacceptable for registry purposes would solve the problem. Since the .eu domain has just started, obviously no marks of the nature "domain.eu" have yet been established in the market, and they are pure fictions.
.
Permalink : Andis Kaulins : 1/19/2006 05:48:00 PM
Cybersquatting of .eu Domains - Apply US principles?
EURid, the European Registry of Internet Domain Names for the .eu domain, now has a WhoIs page (available in all 20 EU languages) at EURid- Domain Status, where domain names can be entered in the searchbox to see if they are available for registration or to find out who has registered a particular domain name.
Here we already see room for improvement at EURid since instead of stating "Please enter a domain name" they have the message "You did not enter a domain name" which is rather a foolish greeting for someone just landing at that page.
If, for example, one enters the term "whois" or "Europa" in the search box, then one is informed that the domain is registered and after entry of the validation text one can click the button "details" to get registration information.
If, for example, one enters the term "hotel" and the validation text one can then click either the "sunrise" or "variants" button. If one clicks "sunrise" then one can view all of the applications filed for the domain hotel.eu (currently 123 applications). One is informed that the status of this domain name is "APPLICATION PENDING".
If one clicks "variants" one gets a list of domain names containing the word "hotel" for which applications have been filed, for example, "airporthotel".
EURid lists only the first 25 variants, so that for the entry "hotel" this currently runs from "51hotels" to "alofthotels" and the rest of the alphabet is missing. This is definitely in need of correction.
If one enters names such as Germany, Deutschland, or Hamburg, one gets a message that the domain name is "RESERVED", but if one enters London there are 5 applications pending for london.eu, and, similarly, 3 applications pending for paris.eu.
How this could happen is a mystery to us since it would seem that the city names of London and Paris would be reserved to the cities.
If one enters well-known trademarks such as Sony or Cocacola one sees several applications.
If our checks are any indicator, many institutions that should be filing for .eu domain names are not doing so in a timely fashion. If this leads to legal trouble down the road, then institutions are themselves at fault, relying on their already established .com or similar domains, rather than filing for a comparable .eu domain.
Other sample searches:
europeancommission.eu is "reserved" but
eucommission.eu is listed as "available"
235 applications have been made for the domain sex.eu
97 applications have been made for the domain travel.eu
54 applications have been made for the domain news.eu
44 applications have been made for the domain sport.eu
28 applications have been made for the domain sports.eu
11 applications have been made for the domain microsoft.eu
11 applications have been made for the domain omega.eu
9 applications have been made for the domain yahoo.eu
7 applications have been made for the domain google.eu
6 applications have been made for the domain time.eu but Time Warner Limited seems to be on the ball and has registered properly and first for this name.
3 applications have been made for the domain cnn.eu
Based on the time stamps of the applications, which in some cases differ only by seconds, the registration process may have given an advantage to faster servers (?) or those located closer to Belgium (?), so we already see some pre-programmed lawsuits in the making over EURid's granting of domain names through the first-come first-served process as regards the earliest applications, all of which of course were intended to be made electronically at the starting gun of the .eu domain registration process, i.e. just as fast as any possible competitor.
Some institutions seem to have made multiple applications to try to ward off this problem and some names seem to have been grabbed in grand style by cybersquatters.
This problem has already been raised in the media, as reported by The Herald in Scotland (Big names grab their domains to thwart the internet squatters), a Dec. 9, 2005 article by James Morgan and Sharon Flaherty (p. 7) where they write:
"Already, Glasgow.eu and Edinburgh.eu have been reserved by a Dutch company, Traffic Web Holding BV, which has filed applications for scores of European cities, including London, Rome and Paris. The Netherlands firm has registered trademarks under the names "Gla&sgow" and "Edin&burgh", apparently trying to exploit what it sees as a loophole in the "prior right" rule."
Indeed, Traffic Web Holding B.V. has apparently filed for at least 805 domains, listed here, a list which includes other firms which have also filed for numerous domains. Of course, these firms are just using entrepreneurial energy to try to take advantage of what may be a loophole in the EURid guidelines. What are their chances of success?
Although there is no clear information available at the moment as to the exact legal basis for their applications, it appears that some of these firms may have filed trademarks for names in the form such as "domain.eu" and are basing their applications on such alleged trademarks. We do not think that they have much chance of being recognized as trademarks for registration purposes if EURid applies the same basic principles outlined in U.S. Patent and Trademark Office (USPTO) Examination Guide NO. 2-99 of September 29, 1999, covering "MARKS COMPOSED, IN WHOLE OR IN PART, OF DOMAIN NAMES", an examination which of course is not binding for .eu domains, but which nevertheless points to the legal principles involved and which the EU will surely apply in a similar manner.
As stated there:
"When a trademark, service mark, collective mark or certification mark is composed, in whole or in part, of a domain name, neither the beginning of the URL (http://www.) nor the TLD [our note, i.e. the .eu part] have any source indicating significance. Instead, those designations are merely devices that every Internet site provider must use as part of its address."
Hence, in the USA:
"If the domain name is "XYZ.COM," the term "XYZ" is a second-level domain and the term "COM" is a TLD."
The same applies to the .eu domain in the European Union. It is a TLD. Based on the principles outlined by the USPTO, it will surely not be permitted to claim a domain in the form "domain.eu" as a mark for domain registry purposes and thus these cybersquatting attempts will surely fail.
A report on domain developments is also found at Anchovy - domain name news from Lovells.
All of these problems with .eu domain registrations were foreseeable and it is hard to understand that the EU has not acted in advance to correct the problem. A simple statement that marks in the form "domain.eu" are unacceptable for registry purposes would solve the problem. Since the .eu domain has just started, obviously no marks of the nature "domain.eu" have yet been established in the market, and they are pure fictions.
.
Permalink : Andis Kaulins : 1/19/2006 05:48:00 PM
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