When properly used, the UDRP enables trademark owners to take control of abusive domain names. Yet sometimes the UDRP itself is misused by trademark owners to try to seize desirable domain names to which they have no legal entitlement. Is there a downside to misusing the UDRP to attempt a domain name hijacking? Unscrupulous companies at times misuse the UDRP by improperly invoking its power to compel a transfer of ownership in order to seize inherently valuable, non-infringing domain names that the companies desire for their own use. more
Special interests who oppose privacy are circulating draft legislation to cut short ICANN's Whois policy process, warns Milton Mueller in a post published today in Internet Governance Project. more
On May 25, 2018, the European General Data Protection Regulation (GDPR) came into effect, meaning that European data protection authorities (DPAs) can begin enforcing the regulation against non-compliant parties. In preparation, the ICANN Board passed a Temporary Specification for gTLD Registration Data - essentially a temporary policy amendment to its registrar and registry contracts to facilitate GDPR compliance while also preserving certain aspects of the WHOIS system of domain name registration data. more
I think we are all hoping that when ICANN meets with the DPAs (Digital Protection Authorities) a clear path forward will be illuminated. We are all hoping that the DPAs will provide definitive guidance regarding ICANN's interim model and that some special allowance will be made so that registrars and registries are provided with additional time to implement a GDPR-compliant WHOIS solution. more
In the current debate over the balance between privacy and Internet safety and security, one of the unanswered questions is: "How will those responsible for protecting the public interest gain access to the non-public data in the WHOIS databases post General Data Protection Regulation (GDPR)?" In an attempt to prevent WHOIS data from going "dark," several community members have been working for the past weeks to create a model that could be used to accredit users and enable access to the non-public WHOIS data. more
The compliance deadline for the European Union's General Data Protection Regulation (GDPR) is nearly upon us, the unveiling of a proposed model to bring WHOIS into compliance is said to come from ICANN next week, and everyone is scrambling to understand all that's involved. Implementation of a revised WHOIS model is clearly on the horizon, but what comes after may be the real story! Specifically, if WHOIS information becomes more than nominally restricted, what's the consequence to the data controllers (ICANN and the contracted parties) who implement this revised model? more
The Czech Arbitration Court (CAC) has long offered the least expensive (by far) filing fees for complaints under the Uniform Domain Name Dispute Resolution Policy (UDRP), but its fee are about to become more expensive, at least in most cases. CAC's base UDRP filing fee (for a dispute involving up to five domain names and a single-member panel) will increase on February 1, 2018, from 500 euros to 800 euros. As of this writing, that's equivalent to about U.S. $600. more
The jurisprudence applied in adjudicating disputes between mark owners and domain name holders under the Uniform Domain Dispute Resolution Policy (UDRP) is essentially a system that has developed from the ground up; it is Panel-made law based on construing a simple set of propositions unchanged since the Internet Corporation for Assigned Names and Numbers (ICANN) implemented them in 1999. Its strength lies in its being a consensus-based rather than dictated jurisprudence. more
There is a misconception among some trademark owners and their counsel that passive holding of domain names alone or combined with lack of rights or legitimate interests supports abusive registration. Thus, Respondent's inactive use of the disputed domain name demonstrates bad faith. Respondent also had actual knowledge of Complainant's YOU ASKED FOR IT mark as Complainant has attempted to buy the domain from Respondent... more
Not all domain names identical or confusingly similar to trademarks are actionable. Exhibit 1 are complainants whose trademarks postdate domain name registration. The latest example of this is Insight Energy Ventures LLC v. Alois Muehlberger, L.M.Berger Co.Ltd., D2016-2010 (WIPO December 12, 2016) (<powerly.com>) but there are other, more esoteric examples such as loss by genericide, Shop Vac Corporation v. Md Oliul Alam / Quick Rank, FA1611001701026 (Forum December 10, 2016). more
Acquiring domain names for the purpose of selling them to complainants is the second most heavily invoked of the four circumstances that are evidence of abusive registration. Because no self-respecting domain name reseller will ever admit to acquiring domain names "primarily for the purpose" of selling them to complainants "for valuable consideration in excess of [their] documented out-of-pocket costs directly related to the domain name" evidence of bad faith is typically deduced by other factors. more
No industry is immune from cybersquatting - not even the legal industry. In three recent (and unrelated) UDRP decisions, law firms won decisions ordering the transfer of domain names that contain their trademarks. One of the cases involved Alston & Bird, the large law firm where I began my legal career and first learned about domain name disputes 20 years ago. As the UDRP decision describes it, Alston & Bird is a well-known law firm founded in 1893 with offices throughout the world. more
ICANN recently updated the list of reserved second level domain names. Those are names that you won't be able to register in any of the 1500 or so new domains they're planning to add. There's rather a lot of them, currently 629. The names are in three groups, the ICRC (the Red Cross), the IOC (the Olympic games) and everyone else. Several years ago the Red Cross and later the Olympics came to ICANN and insisted that they make a special list of forbidden names, separate from the various trademark registries. more
Over the last 5 years, hacktivists have continued the practice of redirecting well-known domain names to politically motivated websites utilizing tactics such as SQL injection attacks and social engineering schemes to gain access to domain management accounts -- and that, in and of itself, is not surprising. But what IS surprising is the fact that less than 15% of the 500 most highly trafficked domains in the world are utilizing Registry Locking. more
A recent kerfuffle around Italian chocolate and confectionery producer Ferrero SpA and fan Sara Rosso is the latest example of how important it is for companies to consider carefully the domain and user names they decided to reclaim. Sometimes, enforcing trademark rights online can go really wrong, really quickly. In 2007, Ms. Rosso chose February 5 to be "World Nutella Day" - a time when "Nutella Lovers Unite for One Day!" She built a web presence around Nutella Day that included a nutelladay.com website. more
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