Brand Protection

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

Google Can, at Least for Now, Disregard Canadian Court Order Requiring Deindexing Worldwide

U.S. federal court issues preliminary injunction, holding that enforcement of Canadian order requiring Google to remove search results would run afoul of the Communications Decency Act... Canadian company Equustek prevailed in litigation in Canada against rival Datalink on claims relating to trade secret misappropriation and unfair competition. After the litigation, Equustek asked Google to remove Datalink search results worldwide. Google initially refused altogether... more

Confusing Similarity of Domain Names is Only a ‘Standing Requirement’ Under the UDRP

WIPO's newest overview of the Uniform Domain Name Dispute Resolution Policy (UDRP) succinctly states what decisions have made clear through the years: The UDRP's first test is only a "standing requirement." Standing, under the law, simply means that a person or company is qualified to assert a legal right. It does not mean or imply that one will necessarily prevail on any claims. The UDRP includes a well-known three-part test that all trademark owners must satisfy to prevail, but the first element has a low threshold. more

EFF Warns ICANN Not to Engage in Censorship, Says It Should Stick to Technical Role

A series of articles published by EFF, coinciding with ICANN's 60th meeting in Abu Dhabi this week, Jeremy Malcolm warns that domain name registrars, registries and ICANN can become "free speech week leaks" for online censorship. more

Civil Society Groups Call for Deletion of Internet Filtering Provision in EU Copyright Proposal

The European Digital Rights (EDRi) and 56 other civil society organizations, sent an open letter today to EU decision-makers calling for the deletion of the Article 13 of the Copyright Directive proposal, pointing out that monitoring and filtering of internet content that it proposes breach citizens’ fundamental rights. more

Will October Be Our Biggest Month Yet for .brand TLDs?

I'll admit I tend to get evangelical when I'm talking about .brands. To me and the team at Neustar, every development in this space is exciting and significant and we're always eager to share the latest news and insights. But you don't have to be a .brands nut to see that the last few weeks have shown some serious signs of momentum. And it makes me wonder, with everything that's developed in just the last week or two, could we be set for October to be the biggest month in .brands we've ever seen? more

One Week Left for the Upcoming Brands and Domains Conference

There is only less than one week left for the second edition of the Brands and Domains conference to take place in The Hague, Netherlands, at the Amrath Kurhaus. The domaining conference will be held during the 2nd and 3rd of October, 'the place to be' for all those whose companies are interested in developing the so-called dotBrands. More than 500 companies have already requested their dotBrand domain, and many of them are already using it, but it is 'together' how we can move forward... more

Beware of Extra Fees in UDRP Proceedings

The Uniform Domain Name Dispute Resolution Policy (UDRP) is known as an inexpensive alternative to litigation (and that's true), but some proceedings can end up costing a trademark owner more than it may have expected. There are generally two additional types of expenses that can arise during the course of a UDRP proceeding: (1) extra filing fees for certain aspects of a case filed at the Forum, and (2) an increased filing fee if the domain name registrant wants a three-member panel to decide the case. more

Is a New Set of Governance Mechanism Necessary for the New gTLDs?

In order to be able to reply to the question of whether a new set of governance mechanisms are necessary to regulate the new Global Top Level Domains (gTLDs), one should first consider how efficiently the current Uniform Domain-Name Dispute-Resolution Policy (UDRP) from the Internet Corporation for Assigned Names and Numbers (ICANN) has performed and then move to the evaluation of the Implementations Recommendations Team (ITR) recommendations. more

EFF Cautions Against Unfair TLD Policies, Offers Advice on Choosing New gTLDs for Best Protection

In a white paper released on Thursday, EFF has warned domain registrants against unfair policies set by new TLD registries and offers ways to minimize exposure to trademark bullying. more

Trademark Registrations on the ‘Supplemental Register’ Don’t Count (in Domain Name Disputes)

The Uniform Domain Name Dispute Resolution Policy (UDRP) has never required that a complainant own any trademark registrations to succeed in a domain name dispute, given that common law trademark rights (if properly established) are sufficient. But, as a pair of recent UDRP decisions reminds us, even some registrations are inadequate. The issue relates to the first element of every UDRP complaint, which requires the party seeking relief to prove that the "domain name is identical or confusingly similar to a trademark... more

The URS Also Applies to These Top-Level Domains

The Uniform Rapid Suspension System (URS) is often described as a domain name dispute policy that applies to the new gTLDs. While that's true, the URS is actually broader than that. The URS (a quick and inexpensive policy that allows a trademark owner to obtain the temporary suspension of a domain name) applies to more than just the new gTLDs, that is, those top-level domains that are a part of ICANN's 2012 domain name expansion. more

Do Trade Names Qualify as Trade Marks for Purposes of the UDRP?

Naming is the first imperative. It precedes the launching of new lives as much as it does new businesses. Names secure a presence, and for businesses in the marketplace names can grow into trademarks, if they function like one. Are we not sometimes made aware that not all names are equally distinctive, and that some of them are distinctly commonplace? more

Domain Registrations in New TLDs Overwhelmingly for Defensive Purposes, INTA Study

During the ICANN meeting in South Africa last week, the impact of new gTLD rights protection mechanisms (RPMS) was the subject of key discussions, and some concerns were voiced regarding trademark owners themselves registering domain names excessively and technically abusing the sunrise period. more

Cycling Legend Greg LeMond Sues Cybersquatters Upward of $6.6 Million

A federal restraining order has been issued against a father and son accused of registering several domain names based on cycling legend Greg LeMond's name and his company. more