Domain Management

War of Words - the gTLD Weaponry

Why would the Association of National Advertisers (ANA), representing 400 member organizations and their 10,000 brands that spend $250 billion annually, be so wrong about ICANN's generic top-level domain (gTLD) program? They're complaining as if new gTLDs are being sold overnight in dark alleys with a no questions asked policy in exchange of a large suitcase filled with newly printed currency. This is definitely not the case, so what did they miss? 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

Split UDRP Decisions on (Almost) Identical Domain Names

A company called Rocketgate PR LLC, which owns a U.S. registration for the trademark ROCKETPAY, filed two UDRP complaints on the same date against two different domain name registrants - for the domain names and . (The only difference is that the latter domain name is plural.) In both cases, the disputed domain names were associated with inactive websites. The UDRP cases were assigned to two different panelists, who issued their decisions one day apart. more

New TLD Application Window Opens Tomorrow - What Does It Mean? (Here are Answers to Some Basic FAQs)

Tomorrow, January 12th 2012 ICANN will open the application window for new TLDs. This post includes answers to some of the based frequently asked questions. If you have any other questions/queries, or if something is unclear please let me know via the comment at the end of the post. 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

Revisiting Reverse Domain Name Hijacking

The conduct that reverse domain name hijacking (RDNH) was crafted to punish is "using the [Uniform Domain Name Dispute Resolution Policy] in bad faith to attempt to deprive a registered domain-name holder of a domain name." There are several variations ranging from the plain vanilla, claims that should never have been brought – mark owners whose rights postdate the registration of the challenged domain name as in Vudu, Inc. v. WhoisGuard, Inc. / K Blacklock, D2019-2247... more

Domain Name Case Under ACPA Failed Because Trademark Was Not Distinctive

The federal Anticybersquatting Consumer Protection Act (ACPA) [15 U.S.C. 1125(d)] is a provision in U.S. law that gives trademark owners a cause of action against one who has wrongfully registered a domain name. In general, the ACPA gives rights to owners of trademarks that are either distinctive or famous at the time the defendant registered the offending domain name. The Eleventh Circuit Court of Appeals recently affirmed the decision of a lower court that dismissed an ACPA claim... more

How Can ICANN Improve Institutional Confidence?

This week ICANN held a public consultation in Washington, D.C., where ICANN's President's Strategy Committee (PSC) solicited remarks from a packed audience of intellectual property (IP) lawyers, domain name registrars and other Internet stakeholders on how the organization can improve institutional confidence. No surprise, ICANN's decision to add new generic top-level domains (gTLDs) to the Internet was on many participants' minds. more

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

False Expectations: Attorney’s Fees and Statutory Damages in ACPA Actions

There is a degree of dread in the investor community that prized domain names will be forfeited to trademark owners in proceedings under the Uniform Domain Name Dispute Resolution Policy (UDRP). Since the UDRP has no internal appeal mechanism to correct errors of law or judgment, the sole recourse is an action in a court of competent jurisdiction as spelled out in UDRP paragraph 4(k). In the U.S., this would be a district court under the Anticybersquatting Consumer Protection Act (ACPA). more

CircleID’s Top 10 Posts of 2007

Here is a list of the most viewed news and blog postings that were featured on CircleID in 2007. Best wishes for 2008. more

Implications of ICANN’s New TLD Disqualification Policies and Cybersquatting 3-Strike Law

ICANN's proposed final applicant guidebook unraveled some new policies that would disqualify applicants from the new TLD program. ICANN states that if you lose 3 UDRP cases, you will be disqualified from being a major shareholder, partner, officer, director of a new top-level domain registry... Has ICANN opened a new can of worms with the 3-strike rule? 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

What’s So Outrageous Asking High Prices for Domain Names?

Panels appointed to hear and decide disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) have long recognized that three letter domains are valuable assets. How investors value their domains depends in part on market conditions. Ordinarily (and for good reason) Panels do not wade into pricing because it is not a factor on its own in determining bad faith. more

Outdated Whois Information Might Lead to False Light Tort: Meyerkord v. Zipatoni

It's a late entry, but this opinion may be a dark horse candidate for the most bizarre case of 2008. Meyerkord was a Zipatoni employee and listed as the registrant on domain names at Zipatoni's Register.com account. Meyerkord left in 2003. In 2006, Zipatoni ran an astroturfing viral campaign for Sony to promote the Play Station Portable at the domain alliwantforxmasisapsp.com... Unfortunately for Sony -- and Meyerkord -- the campaign did not go well. more