For registrants of domain names who are not trademark owners, the loss of their domain names can be an irreparable loss; and for brand owners, perhaps not sunk but fraught with uncertainties of recovery. ICANN has attempted to address the issue of inadvertent registration failures in the Expired Registration Recovery Policy (ERRP) and its companion Expired Domain Name Removal Policy (EDNDP), implemented in 2013. EDNDP is fully integrated into the Registrar Accreditation Agreement (RAA). In this way, the ERRP and EDNDP have provided a measure of security against the inadvertent loss of their domain names by registrants, although a review of recent awards shows that no amount of devices security is not quite adequate to prevent loss.
The main feature of the policy is a coordinated mechanism with registrars to alert registrants of the impending expiration of their registrations. The ERRP provides in 2.1.1 that:
Prior to the expiration of any gTLD registration, registrars must notify the registered name holder of the expiration at least twice. One of these notices should be sent about a month before the expiration and the other should be sent about a week before the expiration.
The ERRP also provides for a 30-day âredemption grace periodâ after registration expires. The EDNDP incorporates the essential conditions into the RAA, of which it becomes a contractual obligation. It is only if the holders let pass the dates of the terminals that the domain names return in the general pool:
3.7.5 At the end of the registration period, failure by or on behalf of the holder of the registered name to consent to the renewal of the registration within the time period specified in a second notice or reminder will, in the absence of circumstances extenuating, the cancellation of the registration before the end of the automatic renewal grace period.
Failure to renew on time means that “domain name[s] must be deleted [and returned to the general pool] within 45 days of termination by the Registrar or the holder of a registration contract. (Section 188.8.131.52).
Even with these mechanisms in place, registrants continue to miss their renewal dates. The reason expiration is particularly serious for non-trademark registrants is that they have no status under the UDRP or ACPA and no recourse beyond the grace period of. redemption. This has had an impact, for example, on plaintiffs alleging common law marks, as illustrated in NYBEST Services, LLC v. Jun Zhu, FA1603001667008 (Forum April 29, 2016) (
The question that naturally arises is whether post-EERP failures have become more difficult to justify as inadvertence and whether complainants can (or should) be forgiven for their negligence? The recovery of lost domain names has always and continues to depend largely on the strength of the brand, the time of registration, the time of the complaint, the use to which the domain name is made, it is offered for sale, and the identity of the respondent.
What one can surely count on is that investors specializing in acquiring outdated domain names are on the lookout for opportunities and will almost certainly register names returning to the general pool as soon as they are noticed. In Flowserve Corporation v. Domain Admin / Ashantiplc Limited, FA160500 1674825 (Forum of July 12, 2016), the complainant had recently acquired a century-old company manufacturing industrial pumps and was the assignee of its intellectual property, including. The dissent concluded (but not substantively) that the complainant had failed to prove the recording in bad faith. I’ll come back to dissent in a moment. The Majority rejected Respondent’s argument that it acquired the domain name for the acronym value because,
the real situation is that when a Google search is performed, the best results refer only to the complainant’s trademark. The remote and speculative alternative uses of the term “sihi” merely suggested by the Respondent for possible third party applications as Indian specialty dishes and local hospital acronyms are insufficient to override the worldwide use of the term by one. manufacturer of industrial pumps since the 1920s.
For this reason,
The Panel finds. . . that other than to identify the complainant’s goods and services, âsihiâ is not an acronym sufficiently distinctive for a potential buyer to be prepared to pay a large sum of money. . . . Based on the evidence presented for the purchase of the disputed domain name both in terms of time frame (one day after the expiration of the previous registration) and purchase price, it seems reasonable and more likely for the Panel, that the Respondent performed the same Google search as the Panel to determine demand from potential users, therefore value, and expected that it would recover more than its higher purchase price through ‘a global trademarked pump manufacturer seeking to reclaim their expired .com domain, only through a local Indian specialty chef, restaurateur or local hospital seeking to use the domain as an acronym.
Usually, low grade complainants who wait too long (creating a loose type problem for themselves) fail â NYLSTAR SA v. Domain Administrator, Meryl Blog, D2016-0561 (WIPO June 13, 2016) (
If the loss is intentionalâNYLSTAR and The Brooklyn Brewery Corporation v. Private Registration at Account Privacy / Jeffrey Matthews Ltd., D2015-1258 (WIPO October 29, 2015) (
Considering that the majority in Flowserve found that at best the Respondent was “‘willfully blind’ by failing to make a simple and rapid investigation into whether SIHI was owned by third parties”, the dissent found the Respondent’s position “at least plausible”:
The Respondent’s position appears to be that the reason for acquiring the disputed domain name could have been its inherent value, either as a four-letter “.com” domain name or for other unrelated reasons. related to the meaning of the brand “sihi”. The Respondent presented evidence that âsihiâ has meanings unrelated to the Complainant’s trademark, and that the price paid by the Respondent for the disputed domain name is within the general range in which domain names â .com âwith four letters are commonly marketed. It seems likely that this would be of greater value than unpronounceable domain names or those made up of less common letters.
The Dissent reaches this conclusion despite its skepticism – “Yet I am skeptical of the Respondent’s assertion that it only concerned the non-commercial value of the domain name.” Add a vote and the decision would have gone the other way.
The consensus when it comes to outdated domain names with heavy web traffic is that registrants simply cannot ignore infringement rights. In Dymocks, for example, the Respondent registered the disputed domain name very soon after the Complainant’s registration expired, but any trademark or internet search would have readily disclosed the Complainant’s trademark rights and use. long standing of the word “Dymocks”. See also Colorganics v. Domain Administrator / Marketing Express, FA1604001672179 (Forum June 2, 2016) (
One last interesting note. Usually, when plaintiffs take the first step in the transactional dance to buy (or learn about) domain names and then defendants are challenged in a UDRP proceeding, they often fall back on their business model of selling domain names. domain names, which gives them some degree of support for legitimate registrations. Mark Overbye v. Maurice Blank, Gekko.com BV, D2016-0362 (WIPO April 15, 2016) (âThe Respondent’s offer to sell the disputed domain name to the Complainant is irrelevant because the Respondent was first approached by the complainant to sell the disputed domain name. â) See the previous discussion on this issue, here. However, this fallback argument is not effective in inadvertent lapse disputes. In Flowserve, the panel ruled that this was not important; what is important is that “the defendant offered to sell the disputed domain name for $ 100,000, which far exceeds the amount needed to register the domain name”, citing previous decisions, thus violating the paragraph 4 (b) (i) of the policy.