Domain Management

The .EU Top-Level Domain Facing Radical Shake Up as a Result of the Proposed New European Regulation

In response to outdated Regulations in a rapidly changing world of domain names and internet governance, the European Commission earlier this year proposed a new Europen Regulation for the .EU Top Level Domain (TLD). more

Radio Interview Discusses Domainers and Domaining

Damien Allen of VTalk Radio recently interviewed Professor Eric Goldman of the Santa Clara University School of Law on the topic of "Domaining". The interview covers the nature of domaining as a business and how it differs from cybersquatting. From the interview: "Often times the domainers are not particularly interested in profitable resale and, in fact, in my experience many times when domainers get complaints about domains, they'll just hand the domain name back, no questions asked and no money charged. They're not looking to make money from the resale of the domain names..." more

2011 UDRP Filings Up at WIPO, Down at NAF - And Still Infinitesimal

The World Intellectual Property Organization (WIPO) recently issued a detailed press release regarding Uniform Dispute Resolution Policy (UDRP) cases for which it provided arbitration services in 2011 and, once again, the number of WIPO filings was up. According to WIPO: "In 2011, trademark holders filed a record 2,764 cybersquatting cases covering 4,781 domain names with the WIPO Arbitration and Mediation Center (WIPO Center) under procedures based on the Uniform Domain Name Dispute Resolution Policy (UDRP), an increase of 2.5% and 9.4% over the previous highest levels in 2010 and 2009, respectively." Yet that's an incomplete picture. more

Why Trademark Owners Should Think Twice Before Reclaiming Domains

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

Tracking the Line that Separates Cybersquatting from Trademark Infringement

The Uniform Domain Name Dispute Resolution Policy (UDRP) is a rights protection mechanism crafted by the World Intellectual Property Organization (WIPO) and adopted by the Internet Corporation for Assigned Names and Numbers (ICANN) for trademark owners to challenge the lawfulness of domain name registrations. Cybersquatting or abusive registration is a lesser included tort of trademark infringement, and although the UDRP forum is not a trademark court, as such, in some ways it is since it empowers (assuming the right alignment of facts) to divest registrants of domain names that infringe a complainant's trademark rights. more

2008: A Historic Year for DNS

As we start the new year, it is worth noting some of the major events and news in 2008 that shaped the industry and fueled considerable discussions. Last year's occurrences made for a very historic year, bearing the seeds of future changes for the DNS and domain name industry. 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

Despite Voice and AI Hype: the Domain Name Remains Crucial in Marketing

In the early days of the internet, companies only needed a simple web presence to be among the pioneers of digitization. Playfully animated hover buttons and electronically-synthesized background music were commonly accepted standards. To appear on a search engine, webmasters simply had to submit the URL of their website. more

A Case for Dot-Outlet TLD

This post outlines the correct use of an outlet strategy, points out the value of such a strategy, and the advantages of executing the strategy through a new ICANN top-level domain (TLD) instead of a second-level domain name. Some companies need to signal a brand name with low prices and quality/utility, whether the strategy is for a primary or secondary corporate brand. A successful strategy has to explicitly include lower price and quality. Otherwise, with only a lower price, a brand owner would cannibalize the main brand and cause damage to brand equity. more

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

CENTR Publishes a Paper on Domain Name Registries and Online Content

The Council of European National Top-Level Domain Registries (CENTR) has published a paper on Domain name registries and online content which explores the domain name registries' relation and role regarding content online. more

Domaining Registrar Defeats Cybersquatting Lawsuit: Philbrick v. eNom

Philbrick's Sports is a New Hampshire retailer of sporting goods. eNom's customer registered two domain name variants of Philbrick Sport's website. When the customer didn't pay eNom, eNom took the names back for itself... Each of these domain names were parked with Yahoo, who displayed sponsored ads on the domains. Philbrick's then sued eNom, claiming cybersquatting and trademark infringement. more

What is Good Policy for a Domain Name Registry?

Back from the holidays I must admit I was thinking quite a bit on what is good policy for a registry? Of course I have my own personal favorites that I can not walk away from easily, but instead of thinking for too long, I decided to write down now immediately what is in my head. The main reasons for this are two: the decision by ICANN to change the rules for change in policy regarding the Add Grace Periods. more

Good Faith and Abusive Registration of Domain Names

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

How Not to Develop Public Policy

Some of ICANN's current proceedings on the introduction of new generic top level domains (gTLDs) provide a case study on how not to develop public policy. In particular, the Rights Protection Mechanism proceedings, with serious implications for trademark owners, have followed a course that does not correspond to the ideal of ICANN's bottom-up, consensus-based processes for policy development. More importantly, these proceedings are effectively unilateral developments in international law without the benefit of treaties or international conventions. more