Brand Protection

‘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

Fair Use Incorporating Trademarks in Domain Names

The paragraph 4(c)(iii) safe harbors of the Uniform Domain Name Dispute Resolution Policy are construed from a five word phrase, "legitimate noncommercial or fair use." "Noncommercial" like "identical" in paragraph 4(a)(i) has a defined meaning; it does not include domain names inactively held (for any alleged purpose), although non-use is not necessarily fatal to rights or legitimate interests. "Fair use" has a larger canvass; it includes nominative (commercial) use that is fair and Constitutionally protected speech. more

5 Myths About DMCA ‘Take-Down’ Notices

The so-called notice-and-take-down provisions of the Digital Millennium Copyright Act (DMCA) provide both a very effective tool for copyright owners to get infringing content removed from the Internet as well as an important protection for service providers (such as website hosting companies) that may inadvertently publish infringing material, either directly or via user-generated content. more

Thomson Reuters in Definitive Agreement to Sell Intellectual Property Unit Including MarkMonitor

The portfolio includes Web of Science, Thomson CompuMark, Thomson Innovation, MarkMonitor, Thomson Reuters Cortellis and Thomson IP Manager. 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

UK Bill Ups Prison Term for Online Piracy from 2 to 10 Years

The UK government has unveiled its latest Digital Economy Bill as part of an "ambition for the UK to be the most digital nation in the world". more

Internet Governance Forum USA 2016 on Thursday, July 14

IGF-USA full day conference at the Center for Strategic and International Studies (CSIS) in Washington DC to be held on Thursday, July 14, 2016 from 8:00 AM - 7:00 PM. Key forum topics include IANA transition, ICANN accountability, broadband access, online privacy, Internet of Things, and digital trade. more

ICANN Says It Will Not Get Directly Involved With Infringing Domains

ICANN will not act as judge and jury in copyright disputes. TorrentFreak reports: "In a letter to the president of the Intellectual Property Constituency, ICANN chief Stephen Crocker says that ICANN is neither 'required or qualified' to pass judgment in such cases." more

Unlawful Targeting of Trademarks and Consumers in Registering Domain Names

Unlike trademark applications which go through a lengthy examination process before advancing to registration, anyone (anywhere in the world) can register a domain name identical or confusingly similar to a trademark - instantly and no questions asked, at least, in the traditional space (the legacy gTLDs)! With the new gTLDs registrants will receive notice of possible infringement if the brands are registered with the Trademark Mark Clearing House, but notices do not function as injunctions to block registrants from registering infringing names. more

Strategic Use of Screenshots from the Wayback Machine

Internet Archive contains a vast library of screenshots of websites that its Wayback Machine captures sporadically over the course of domain names' histories. While it doesn't compile daily images it opens a sufficient window to past use which is unique, invaluable, and free. (There are also subscription services, but they come at a hefty cost!). How it's used (and why the Wayback Machine should be in a party's toolkit) for supporting and opposing claims of cybersquatting is illuminated in a number of recent UDRP cases. more

U.S. Congressional Trademark Caucus Haggles Over Price

It was standing-room-only at the Congressional Trademark Caucus session in the Rayburn House Office Building in Washington, D.C. on Wednesday, April 6. The topic, brand protection in the new top level internet domain names, is still, it seems, a draw. With nearly two years' experience and statistical evidence of far fewer problems at far lower costs to brand owners than opponents of the program said would occur, it might be expected that the tone would cool. But the price of peace, I guess, remains eternal vigilance. more

What is the Intellectual Property Constituency (IPC)?

As a longtime member of ICANN's Intellectual Property Constituency (IPC), I'm impressed by the important work that this group does on behalf of trademark owners worldwide (as I've written before). While some die-hard IPC members spend countless (and, often, thankless) hours working virtually and in-person (at ICANN's global meetings) for the constituency, I find it very educational and worthwhile to participate on an ad-hoc basis. more

Charter Approved to Review All Rights Protections Mechanisms in All Generic TLDs

On March 9th, 2016, during its final open meeting at ICANN 55 in Marrakech, Morocco, the Generic Names Supporting Organization (GNSO) Council approved a motion that I proposed to adopt the Charter of the Policy Development Process (PDP) to Review all Rights Protections Mechanisms (RPMs) in all Generic Top-Level Domains. I serve on the Council as one of the two representatives of ICANN's Business Constituency, and my fellow Councilors have designated me to serve as the GNSO's Liaison to the Working Group (WG), and as its Interim Chair. more

The CCT Review Needs You!

Come join the discussion on Wednesday 17:15 UTC. Quis custodiet ipsos custodes? As ICANN approaches its 18th birthday, it marks its ascension to adulthood and independence with a new framework of accountability. As we attempt to modernize and empower the organization with oversight of the DNS, the question of "who watches the watchmen?" is on the tip of everyone's tongue. more

Which Comes First, the Trademark or Domain?

For years, the question of exactly when to register a domain name has been one asked by legal departments, as they've sought to formalize their internal processes. If you were to think about it logically, it would make most sense to register it after the trademark had been cleared. After all, why bother to register a domain, if you aren't going to use it to support a product, service or campaign? more