First '.tel' UDRP decisions issued

International
The first decisions involving the generic top-level domain (gTLD) '.tel' have been issued under the Uniform Domain Name Dispute Resolution Policy (UDRP).
 
The new '.tel' gTLD was launched by UK-based operator Telnic Limited on December 3 2008 (for further details please see "‘.tel’ calling: sunrise period starts"). The '.tel' extension is different from other gTLDs in that it allows individuals and businesses to store all their contact information directly in the domain name system without the need to build, host or manage a website. The type of content is pre-formatted by Telnic.
 
Many domain name specialists anticipated difficulties in the application of the UDRP to a dispute involving a '.tel' domain name. To obtain the transfer of a domain name under the UDRP, a complainant must prove all of the three following circumstances:
  • the domain name registered by the respondent is identical or confusingly similar to a trademark or service mark in which the complainant has rights;
  • the respondent has no rights or legitimate interests in the domain name; and
  • the domain name has been registered and is being used in bad faith.
Since a '.tel' domain name can point only to a pre-formatted Telnic standard page setting out various contact information, it was anticipated that the third prong of the UDRP may prove more difficult to establish because proof of bad-faith use is often established by the pointing of the domain name to a particular type of content (eg, sponsored links or a competitor's website).
 
To date, five complaints involving '.tel' domain names have been filed with the World Intellectual Property Organization. The complainants all succeeded in obtaining the transfer of the respective domain names into their ownership.
 
The first '.tel' UDRP decision was published on August 6 2009 and related to the domain name 'novozymes.tel'. After being contacted by Novozymes A/S, the respondent, a French resident, made an offer to transfer the domain name subject to payment of $3,000. Novozymes did not respond to that offer and asserted that the content of the website had been modified to include a derogatory statement about itself, as well as several links related to pornography or denouncing starvation.
 
Novozymes had no difficulty in establishing the first prong of the UDRP, since the domain name reproduced the exact mark for which Novozymes held numerous registrations worldwide, including in France. As for the second element of the UDRP, the panel found that the respondent had no rights or legitimate interests in the domain name. According to the panel, it was more likely than not that the respondent was aware of Novozymes' trademark.
 
Turning to the third prong of the UDRP, the panel found that the respondent had registered the domain name with a view to selling it to Novozymes. The panel considered the timeframe between the notification of the complaint and the modification of the website as an indication of bad faith on the respondent's part. The panel thus ordered the transfer of the domain name to Novozymes.  
 
Unfortunately, given the facts of this case and the presence of several elements suggesting the respondent's bad faith, the panel did not have to address any issues relating to the specific nature of the '.tel' gTLD in the context of the UDRP.
 
However, the second decision, which was decided on September 4 2009 in relation to the domain name 'osram.tel', addressed specific characteristics of '.tel' domain names. The complainant was Osram GmbH, a company based in Germany, and the respondent was an individual residing in the Russian Federation. The domain name was used as a holding page without any information.
 
Given its extensive trademark portfolio, Osram easily passed the first hurdle of the UDRP test. In respect of the second condition, the panel found that the respondent did not use the domain name in relation to a legitimate offer of goods and services. The panel added that the respondent had registered the domain name with awareness of Osram's products and trademarks. The panel also rejected the respondent's argument that use of a '.tel' domain name for the purpose of providing contact information for a physical person could not constitute commercial use or lead to the infringement of any third-party rights.
 
The respondent also submitted that he would display Osram's information on the website in order to prove his lack of bad faith. However, the panel stated that the respondent's ongoing activities had to be taken into account. It concluded that there was no use of the domain name and no proof of the respondent's intentions.
 
Turning to the last limb of the UDRP, the panel decided that the respondent had registered the domain name in bad faith since the latter must have known about Osram's products and trademarks, and did not conduct any legitimate business activity. As for use of the domain name in bad faith, the panel based its findings on the fact that:
  • the domain name was not used for personal interest or for presentation of products or activity; and
  • the respondent's use of the domain name had created a likelihood of confusion with Osram's products and trademarks.
As a result, the panel decided to transfer the domain name to Osram.
 
In the 'coloplast.tel' decision, published on September 30 2009, the panel ordered that the domain name be transferred and commented as follows on the thorny question of bad-faith use in the context of '.tel' domain names:
 
"The question then is whether the respondent has also used the disputed domain name in bad faith. There is no evidence that the respondent used the disputed domain name in connection with an active website. There is no other evidence of any other active use. There is no evidence of the kinds set out in paragraph 4(b) of the [UDRP], which are examples (not exhaustive) of bad faith. Despite this, the panel considers that the holding of the disputed domain name by the respondent is itself a use in bad faith. In the absence of supporting evidence from the respondent, the disputed domain name can only plausibly refer to the complainant and its mark. In the circumstances of this case, such a use is demonstrative of bad faith."
 
The fourth decision involved the domain name 'heineken.tel'. The case involving the domain name 'zinodavidoff.tel' was terminated before a decision was issued.
 
These decisions have usefully, although modestly, contributed to defining the specific regime of UDRP disputes involving '.tel' domain names. However, some level of uncertainty will remain until further clarification as to what might be expected from complainants in '.tel' disputes is obtained, especially in respect of the third limb of the UDRP.
 
David Taylor and Vincent Denoyelle, Lovells, Paris

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