Brand Protection

Remedies for Cybersquatting: New gTLD Domain Names

In the discussions proceeding the World Intellectual Property Organization (WIPO) publishing The Management Of Internet Names And Addresses: Intellectual Property Issues (Final Report, April 30, 1999) that ultimately led to the ICANN implementing the Uniform Domain Name Dispute Resolution Policy (UDRP) (1999) commentators considered three remedies to combat cybersquatting: suspending, cancelling, and transferring infringing domain names. more

Respondent Had Rights or Legitimate Interests in Domain Name by Using It to Promote Genuine Business

In the case of Avon Products, Inc. v. Jenika Mukoro, Heirs Holdings, a 3-member WIPO Panel denied the Complainant's efforts to have the domain name avonhealthcare.com transferred because the Complainant failed to sustain its burden of establishing that the Respondent had no rights or legitimate interests in the disputed domain name. The Panel found that the Complainant proved that its trademark AVON (which has been in use since 1929) is well-known in the field of cosmetics... more

What’s Abusive in Registering Domain Names, and the Reverse?

The two major providers of arbitration services for adjudicating cybersquatting complaints under the Uniform Domain Name Dispute Resolution Policy (UDRP), the World Intellectual Property Organization (WIPO) and Forum, issue daily lists of decisions. In approximately 90% of those disputes, the registrations cannot be described as anything less than mischievous in acquiring second level domains incorporating well-known or famous marks. more

Short Strings of Alphabet Letters in Domain Names: Random to Some, Identifiers to Others

What is the intrinsic (as opposed to trademark) value of short string domain names? It depends, of course. Rights holders have been willing to challenge domain name registrants even if they have no actionable claim for cybersquatting... UDRP Panels have over the years, and in many cases, affirmed that short strings are "inherently valuable in themselves precisely because they are (a) short and (b) can reflect a wide range of different uses." This does not mean it is open season against rights holders for short strings, but it does mean the facts and proof of cybersquatting must be in proper alignment, and this calls for some sober thinking about the evidentiary demands of the Uniform Domain Name Dispute Resolution Policy (UDRP). more

Combinations of Dictionary Words in Domain Names: Common vs. Distinctive Phrases

The lexicon of domain names consists of letters, words, numbers, dots, and dashes. When the characters correspond in whole (identical) or in part (confusingly similar) to trademarks or service marks and their registrations postdate the first use of marks in commerce registrants become challengeable under the Uniform Domain Name Dispute Resolution Policy (UDRP) as cybersquatters. more

Making a Strategic Decision: URS or UDRP?

A discussion is presently underway about the Uniform Rapid Suspension System (URS) (and in Phase 2 next year of the Uniform Domain Name Resolution Policy (UDRP)), whether it is performing as intended. The URS is less than five years old, and there are not an overwhelming number of decisions. Since 2013, rights holders have filed less than one thousand complaints (with three providers, the Forum being the most active), which translates into less than 170 decisions annually... more

Tracking the Line that Separates Cybersquatting from Trademark Infringement

The Uniform Domain Name Dispute Resolution Policy (UDRP) is a rights protection mechanism crafted by the World Intellectual Property Organization (WIPO) and adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) for trademark owners to challenge the lawfulness of domain name registrations. Cybersquatting or abusive registration is a lesser included tort of trademark infringement, and although the UDRP forum is not a trademark court, as such, in some ways it is since it empowers (assuming the right alignment of facts) to divest registrants of domain names that infringe a complainant's trademark rights. more

Trademarks vs Domain Names: Dictionary Words, Common, Combinations, and Arbitrary Letters

The typical daily accounting of decisions filed in disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) may include an award or two dismissing complaints (three is particularly noteworthy: weddingfleamarket.com, dme.com, and scheduleflow.com from the Forum for January 20, 2018), but overwhelmingly complaints are granted not dismissed. Let us imagine a trademark or service mark that is neither a dictionary word nor composed of common combinations, would anyone be surprised when the Panel rules in Complainant's favor? more

Kodak Announces a Blockchain Platform Initiative for Image Rights Management

Kodak today revealed the launch of a blockchain-based platform called KODAKOne which is aimed to empower photographers and agencies to take greater control of image rights management. more

The UDRP and Judicial Review

The courts of the United Kingdom have set themselves outside the mainstream of Internet consensus policies on trademark/domain name disputes. A U.K. court decision regarding the UDRP reflects an unfortunate tendency to overlook one of the fundamental principles of the UDRP, namely the opportunity to seek independent resolution of a trademark/domain name dispute by court proceedings. more

So, You Claim to Have an Unregistered Mark! Is there Cybersquatting?

Complainants have standing to proceed with a claim of cybersquatting under the Uniform Domain Name Dispute Resolution Policy (UDRP) if the accused "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights" (4(a)(i) of the Policy). Quickly within the first full year of the Policy's implementation (2000) Panels construed "rights" to include unregistered as well as registered marks, a construction swiftly adopted by consensus. more

2017 Domain Name Year in Review

Given that it's been a few years since my last domain name year in review, I've really enjoyed looking back at this year's biggest domain name stories and seeing how this industry has evolved. This year, in particular, has seen some notable changes which are likely to impact the domain name landscape for years to come. So without further ado, here is my list for 2017. more

Long-held Domain Names Transferred to Complainants

There has lately been a number of long-held investor registered domain names transferred to complainants under the Uniform Domain Name Dispute Resolution Policy (UDRP). Two of the domain names were registered 23 years ago. This has provoked several commentators to complain that the UDRP is tilted in favor of mark owners and trademark-friendly panelists expressing hostility to the domain industry. I think we have to dig deeper than this. more

Vulnerabilities of Weak Marks and Uncurated Websites

Dictionary words, alone, combined as phrases, modified by other parts of speech, and single letters that function as marks also retain in parallel their common associations that others may use without offending third-party rights. As a rule of thumb, generic terms are not registrable as marks until they perceivably cross a threshold to suggestive and higher classifications. more

Apple (Not Surprisingly) is Not a Cybersquatter

It's highly unusual for a well-known trademark owner to be accused of cybersquatting, but that's what happened when a Mexican milk producer filed a complaint against Apple Inc. under the Uniform Domain Name Dispute Resolution Policy (UDRP) in an attempt to get the domain name lala.com. Not only did Apple win the case, but the panel issued a finding of "reverse domain name hijacking" (RDNH) against the company that filed the complaint. more