Brand Protection

Portrait of a Single-Character Domain Name

Let's take some crayons and draw a picture of the current state of affairs regarding single-character domain names (SCDNs), and specifically O.COM. During the public comment period for the current O.COM RSEP, ICANN's own Intellectual Property and Business constituencies recommended implementation of rights protections mechanisms (RPMs) for intellectual property, including Sunrise and Priority Access periods. It is curious that such hard-won protections are being so easily set aside by Verisign and ICANN. more

Old Dog, New Tricks: Gift Card Scams in Social Networks

In the past few months, a flurry of gift card scams leveraging such high-profile brands as Best Buy, Whole Foods and IKEA have emerged on Facebook. These scams often use the brand's logo, website URL, or general "look and feel" on Facebook "fan" pages to give the impression that these offers are legitimate. Some scams are even bold enough to include bogus, non-interactive fan comments to add a greater sense of authenticity to the gift card offer. To date, these scams have been successful at tricking tens of thousands of consumers. In just one day, for example, a fan page titled "IKEA Get a FREE $1000 IKEA Gift Card! (ONLY AVAILABLE 1 DAY)" registered 40,000 fans before being shut down. more

Funky Ninth Circuit Opinion on Domain Names and Nominative Use - Toyota v. Tabari

Every time I see a federal appellate opinion on domain names, I'm vaguely reminded of the Country Joe song I-Feel-Like-I'm-Fixin'-To-Die Rag, whose course goes "And it's one, two, three, what are we fighting for?" Fortunately, domain name disputes do not lead to the senseless loss of life we experienced from the Vietnam War. Unfortunately, lengthy domain name litigation usually has little more strategic value. more

Implications of ICANN’s New TLD Disqualification Policies and Cybersquatting 3-Strike Law

ICANN's proposed final applicant guidebook unraveled some new policies that would disqualify applicants from the new TLD program. ICANN states that if you lose 3 UDRP cases, you will be disqualified from being a major shareholder, partner, officer, director of a new top-level domain registry... Has ICANN opened a new can of worms with the 3-strike rule? more

Branded Domains Are the Focal Point of Many Phishing Attacks

As a long-established online attack strategy, phishing remains a popular tool for fraudsters because of its effectiveness. The Anti-Phishing Working Group reported more than 300,000 distinct phishing attacks in December 2021 -- more than three times the number reported in early 2020, and the highest monthly total ever identified. more

Domain Names Identical to Trademarks But No Likelihood of Confusion

Confusion is a basic element in both cybersquatting and trademark infringement. It appears twice in the UDRP; once in paragraph 4(a)(i) in the adjectival phrase "confusing similarity", and once in paragraph 4(b)(iv) in the phrase "likelihood of confusion." Each use of the distinctive phrases is directed to a different observer. More of this in a moment. The first relates to standing; the second to infringement. Unless a party has standing it can have no actionable claim. more

ICANN SSAD Proposal Poised to Succeed?

The GNSO Council and the ICANN Board both seem poised to grant sufficient runway to the community to refine an idea for a simple ticketing system designed to centralize requests for registrant information disclosures and provide meaningful data that is likely to help ICANN staff enhance its assessment of the SSAD proposal. This is very good news for those who advocate for consumer safety and trust on the Internet, and it is very good news for the ICANN multistakeholder model. more

Where Domain Security Meets the Supply Chain Crunch

Over the last two years, we've all faced supply shortages on items we previously never thought could be in short supply. Most recently, the baby formula and semiconductor markets were hit. Before that, supply chain attacks on Colonial Pipeline and JBS Foods showed us that an attack on one company through a singular point of compromise has the potential to disrupt an entire network of connected companies, products, partners, vendors, and customers. more

WIPO Becomes First Non-Chinese Entity to Provide Domain Dispute Resolution Services for China’s .cn

WIPO's Arbitration and Mediation Center earlier this month became the only non-Chinese entity to provide domain name dispute resolution services for the .CN and .?? (China) country code Top-Level Domain (ccTLD). 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

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

The Suitable Defendant Rule: In Rem Jurisdiction under the ACPA

The Anticybersquatting Consumer Protection Act (ACPA) creates two distinct avenues by which mark owners may seek a remedy for cybersquatting. A person who is a suitable defendant under 15 U.S.C. §1125(d)(1)(A) is one over whom the court has in personam jurisdiction. However, if the mark owner is "not able to obtain in personam jurisdiction over a person who would have been a defendant" in the ACPA action, then "[t]he owner may file an in rem civil action against a domain name in... more

Top Ten Internet Law Developments of 2012

I'm pleased to share my list of top 10 developments of 2012... I'm surprised whenever I read about a new European ruling that's adverse to a Silicon Valley company, because at this point I assume that everything Silicon Valley companies do in Europe is already illegal. Google, Facebook and other Silicon Valley players are under constant legal attack in Europe on countless fronts. Everyone might be happier if the Silicon Valley players just got out of Europe altogether. more

Only Bad Actors Should Worry About the URS

With DNS abuse a topic of increased concern throughout the community, any controversy over adopting the Uniform Rapid Suspension System (URS) for all generic top-level domains (gTLDs) seems misplaced. The URS was designed as a narrow supplement to the Uniform Domain-Name Dispute Resolution Policy (UDRP), applicable only in certain tightly defined circumstances of clear-cut and incontrovertible trademark infringement involving the registration and use of a domain name. more

Three Reasons Why CISOs Need to Understand Domain Security

Domain name abuse is one of the most dangerous and under-regulated issues in digital business security today. An attack on a web domain can lead to the redirection of a company's website, domain spoofing, phishing attacks, network breaches, and business email compromise (BEC). Domains used as a company's online world are part of an organization's external attack surface and need to be continuously monitored for cybercrime attacks and fraud. more