Brand Protection

UDRP Complaint: Actually, a Motion for Summary Judgment

Trademark owners (and here I'm talking about those with U.S. registrations even if they are foreign entities) have a choice of forum for challenging alleged cybersquatting domain names. They can either sue in district court under the ACPA, or get a quicker and less expensive result by filing a complaint and asserting a claim under the UDRP. But to get to a quicker and less expensive result everything about the process is accelerated, and this begins with drafting the complaint. 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

UDRP and the Law: Should Cybersquatting be the Default View?

I have returned to the subject of the title on a number of occasions and it is worth revisiting. Like judicial proceedings, the substance of disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) and Panel determinations are publicly available. The Internet Corporation for Assigned Names and Numbers (ICANN) mandates in its Rules that all decisions must be delivered to the parties within "three business days" of their receipt of the decision and posted on providers' websites. more

Euro 2020 Part Two: eCommerce Marketplace Activity

Following our previous article on the Euro 2020 football tournament that looked retrospectively at domain name registrations relating to the competition, this article considers activity on eCommerce marketplaces. For this study, our Discovery Engine technology was used to conduct a regular series of scans across key international online marketplaces. We monitored for listings (offers of sale) relating to Euro 2020 clothing and merchandise. more

What Legal Framework for Online Identity?

Have you ever thought of how reputation is created in cyberspace? Beth Noveck wrote an article, 'Trademark Law and the Social Construction of Trust: Creating the Legal Framework for On-Line Identity' in which she argues that, to determine what rules should govern on-line identity, we should look to trademark law, which has the best set of rules to deal with the way reputation is created in cyberspace. more

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

Court Finds Pirate Bay Defendants Guilty, With Jail Sentence

A Swedish court on Friday found all four defendants guilty in a copyright test case involving one of the world's biggest free file-sharing websites. "The Stockholm disctrict court has today found guilty the four individuals that were charged with accessory to breaching copyright laws," the court said in a statement. "The court has sentenced each of them to one year in prison." more

How to Protect Your Brand in Web3

In 2014, computer scientist Gavin Wood coined the term "Web 3.0." The phrase, which has now been shortened to "Web3", refers to the third generation of the internet that's designed to be truly decentralised and free from a central authority. Web3 has the potential to add real-world value for businesses by creating additional avenues to reach consumers. However, owing to its less regulated nature, brands also have the potential to be taken advantage of both by users and by the providers in the space. 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

Dictionary Words Alone or Combined Functioning as Trademarks Are No Less Dictionary Words

By definition "any word" or "any combination of words" can function as trademarks, but whether alone or combined for that purpose no use can overrule their ordinary meanings, support their removal from the public domain, or prevent speculation or use of identical or confusingly similar words by businesses other than rights holders. The fact is, all words that are not coined found in dictionaries, word lists, and circulating in world cultures are generic. 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

A Transport Protocol’s Perspective on Optimizing Starlink Performance

Digital communications systems always represent a collection of design trade-offs. Maximizing one characteristic of a system may impair others, and various communications services may choose to optimize different performance parameters based on the intersection of these design decisions with the physical characteristics of the communications medium. 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

Beyond WHOIS: CircleID and Edgemoor Research Institute Inaugural Event on Balancing Privacy and Legitimate Data Needs

The global debate over Internet privacy and security took center stage in a webinar hosted by CircleID in partnership with the Edgemoor Research Institute. The event marked the first in a series exploring the delicate balance between safeguarding personal data and ensuring legitimate access to domain name registration details. As governments, cybersecurity experts, law enforcement, and intellectual property holders grapple with the evolving regulatory landscape, Project Jake seeks to establish a framework that prioritizes policy clarity, efficiency, and adaptability. 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