Brand Protection

Confusingly Similar But No Likelihood of Confusion in UDRP

The word "confusion" in the Uniform Domain Name Dispute Resolution Policy (UDRP) signifies two separate states of mind. The first in ¶4(a)(i) appears in the phrase "identical or confusingly similar to a trademark or service mark in which the complainant has rights." It is a test to determine whether the mark owner has standing to maintain a UDRP proceeding. more

Take That Down Right Now - and Give Me That Too

Google has released a government requests tool. It's highly illuminating and may end up being quite disruptive. That's what surprising data visualizations can do for us. ... The tool allows us to see the number of requests from different countries that Google received during the last six months of 2009. More than 3600 data requests from Brazil during those six months and more than 3500 from the US. But just 40 or so from Canada and 30 from Israel. more

What Due Diligence Satisfies Domain Name Registrant’s Representations (UDRP)?

Not infrequently mark owners in disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) claim that respondents should have been aware that the domain names they registered corresponded to their marks; and from this, urge panelists to draw the inference that the registrations were designed to take advantage of their goodwill and reputation. To test this premise, we need to take a step back for a quick look at UDRP provisions. All it takes to acquire a domain name is to sign a registrar’s registration agreement. more

Multistakeholderism Is Working: A Short Series of Articles

I was in a conversation with a close friend the other day, you know the kind where you have been friends for so long that you have endured each other experimenting with changed politics, evolving religion, and if you are unlucky, flirtations with multilevel marketing. We were discussing politics that day, which is not unusual given our ancient friendship and the recent change at the helm of the United States. more

Limitations and Laches as Defenses in Domain Name Cybersquatting Claims

UDRP Paragraph 4(c) states as a preamble that "[a]ny of the following circumstances, in particular, but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interest to the domain name for purposes of Paragraph 4(a)(ii)." Three nonexclusive circumstances are listed. more

‘Pokemon’ Domain Names are a No-Go

The legal issues surrounding the sudden success of "Pokemon Go" -- one of the world's fastest-growing apps or games -- are popping up as quickly as unhatched Eggs at a PokéStop. Within days of the game's release, the National Safety Council issued a call that "urges pedestrians to exercise caution while playing the Pokémon Go augmented reality game" and "implores drivers to refrain from playing the game behind the wheel." more

Losing and Reclaiming Domain Names

For registrants who are not trademark owners losing their domain names can be an irretrievable loss; and for trademark owners, perhaps not irretrievable but fraught with uncertainties of recovery. ICANN attempted to solve the problem of inadvertent lapses of registration in the Expired Registration Recovery Policy (ERRP) and its companion the Expired Domain Name Deletion Policy (EDNDP), implemented in 2013. more

Asking a Better Question to Uncloak the Online Copyright Debate

The proverbial Pandora's box that is opened whenever the topic of online copyright infringement is raised throws into sharp relief a host of challenges that have confounded policy makers, internet service providers and consumers for many years. Chief amongst them is how to strike an appropriate balance between protecting the rights of content owners while continuing to promote the interests of the public and preserving the benefits of the internet, given its unprecedented ability to facilitate the rapid dissemination of copyrighted content. more

.AI You Ready? A Domain to Add to Your Portfolio… Before Someone Else Does

On the sunny beaches of Anguilla -- a small island of just 35 square miles -- I'm sure artificial intelligence (AI) is the last thing people are thinking about. The primary industries of Anguilla, set in the Leeward islands in the Caribbean, are tourism and offshore banking. However, this nation has been assigned the country code top-level domain (ccTLD) .AI -- which is being repurposed to represent artificial intelligence. more

“Can IP Be Protected in the Internet Age?” Panel Recap from Russian Economic Development Conference

In June, I attended the St. Petersburg International Economic Forum ("SPIEF"), organized by the Russian government's Ministry of Economic Development. This was a major event drawing thousands of participants to St. Petersburg... I participated on a panel entitled "Can IP Be Protected in the Internet Age?" Right away, I trust many of you find the titling odd... more

The Continued Rise of Phishing and the Case of the Customizable Site

We’ve noted in previous CSC studies that phishing continues to be an extremely popular threat vector with bad actors and shows no signs of subsiding in part, because of the COVID–19 pandemic and the rise in popularity of remote working. Indeed, the most recent figures from the Anti-Phishing Working Group (APWG) show that the numbers of phishing attacks are higher than ever before, with the quarterly total of identified unique phishing attacks exceeding 1 million for the first time in Q1 2022, and over 600 distinct brands attacked each month. more

ACPA Dilemma: Federal Court Denies Injunction in Landmark Case - Cybersquatting Loophole or Legal Oversight?

This case had a bit of a weird result -- even though the brand owner had a mark that was 20 years old, and the alleged cybersquatter, in the meantime, acquired a domain name on the open market identical to that mark, because the domain name was first registered (by an unrelated party) before the brand owner's trademark rights arose, there was no relief under federal trademark law. more

Cybersquatting and Reverse Domain Name Hijacking: UDRP to ACPA

Trademark owners in the U.S. have a choice in suing for alleged cybersquatting: either the Uniform Domain Name Dispute Resolution Policy (UDRP) or the Anticybersquatting Consumer Protection Act (ACPA). Of the two, the UDRP is far and away the forum of choice for a very good reason: it is speedy, efficient, and inexpensive. Complaint to award can be concluded in less than 45 days. more

The Mission Has Already Crept

ICANN's mission, and the avoidance of "mission creep", is currently the subject of intense debate in the Internet community. Multiple cross-community working groups are dealing with the proposal by an agency of the United States government, NTIA, to give up the last vestiges of its control of the IANA function. Many of the new organizational structures under consideration purport to deal with ICANN's expanding mission. more

How Will the New .AU Domain Licensing Rules Impact You?

The .AU Domain Administration (auDA) will soon implement new .AU domain administration licensing rules either late this year or early next year. These rules apply to new registrations and around 3 million existing domain names in the com.au, net.au, org.au, and more .AU namespaces... Previously, an Australian trademark application or registration may constitute the required Australian presence for an .AU domain name, but the domain name need not match the trademark. more