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

Using the URS as a Preliminary Injunction for Domain Name Disputes

As I've written before, the Uniform Rapid Suspension System (URS) - the domain name dispute policy applicable to the new generic top-level domains (gTLDs) - is just not catching on. Whether because of its limited suspension remedy, high burden of proof or other reasons, the URS remains unpopular among trademark owners. However, there's one interesting use to which the URS can be put. 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

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

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

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

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

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

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

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

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

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

Trademarks vs Domain Names: Dictionary Words, Common, Combinations, and Arbitrary Letters

The typical daily accounting of decisions filed in disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP) may include an award or two dismissing complaints (three is particularly noteworthy: weddingfleamarket.com, dme.com, and scheduleflow.com from the Forum for January 20, 2018), but overwhelmingly complaints are granted not dismissed. Let us imagine a trademark or service mark that is neither a dictionary word nor composed of common combinations, would anyone be surprised when the Panel rules in Complainant's favor? more

The Suitable Defendant Rule: In Rem Jurisdiction under the ACPA

The Anticybersquatting Consumer Protection Act (ACPA) creates two distinct avenues by which mark owners may seek a remedy for cybersquatting. A person who is a suitable defendant under 15 U.S.C. §1125(d)(1)(A) is one over whom the court has in personam jurisdiction. However, if the mark owner is "not able to obtain in personam jurisdiction over a person who would have been a defendant" in the ACPA action, then "[t]he owner may file an in rem civil action against a domain name in... more