Domain Management

Apple (Not Surprisingly) is Not a Cybersquatter

It's highly unusual for a well-known trademark owner to be accused of cybersquatting, but that's what happened when a Mexican milk producer filed a complaint against Apple Inc. under the Uniform Domain Name Dispute Resolution Policy (UDRP) in an attempt to get the domain name lala.com. Not only did Apple win the case, but the panel issued a finding of "reverse domain name hijacking" (RDNH) against the company that filed the complaint. more

Trademark Registrations on the ‘Supplemental Register’ Don’t Count (in Domain Name Disputes)

The Uniform Domain Name Dispute Resolution Policy (UDRP) has never required that a complainant own any trademark registrations to succeed in a domain name dispute, given that common law trademark rights (if properly established) are sufficient. But, as a pair of recent UDRP decisions reminds us, even some registrations are inadequate. The issue relates to the first element of every UDRP complaint, which requires the party seeking relief to prove that the "domain name is identical or confusingly similar to a trademark... more

Creating, Protecting and Defending Brand Equity - Part 2

In the second of three posts about how brand owners can protect their trademarks from misuse, I will focus on two concepts: the role of "use" and registration in protecting your brand, and domain names -- specifically acquisition and protection. Internet domain names have emerged as a major battleground for brand promotion and protection. While it is easier than ever to register and promote your name on the internet, it is also easier for others to trade on another brand's equity. more

The .BEST Acquisition: 3 Months After

The .BEST new gTLD Registry was acquired 3 months ago by Cyril Fremont, a French Entrepreneur from Paris, and a team of investors. I took the time to meet with Cyril in the latest ICANN63 meeting in Barcelona to ask him a few questions about his future new gTLD project, three months after it was acquired from the previous owner... .best has just released the MVP (Minimum Viable Product) of the social network. The ".best" social network will be officially present at the next Namescon... more

The Countdown Has Started – Here Come One-Year Digital Certificate Life Cycles

Apple announced its decision to trust only one-year digital certificates on its Safari browser in February 2020. This decision created a domino effect, with Mozilla and Google following suit; certificate providers announced they would not issue two-year certificates after Aug. 19, 2020. We wrote an article in March to help brands to prepare for this change. more

A Mexican Standoff in Wonderland

Wikipedia defines a Mexican standoff as "a confrontation in which no strategy exists that allows any party to achieve victory. As a result, all participants need to maintain the strategic tension, which remains unresolved until some outside event makes it possible to resolve it." This would be an apt way to describe what may be possibly occurring presently between the Internet Corporation for Assigned Names and Numbers (ICANN) and its largest ratepayer, VeriSign. more

ICANN to IP Experts: Come Back With a Solution for Internet Trademark Protection

Trademark issues are emerging with the upcoming introduction of new generic top-level domains on the internet, and the board members of the body introducing the names has passed the ball back to intellectual property experts to find answers. The Intellectual Property Constituency of the Internet Corporation for Assigned Names and Numbers (ICANN) has been asked to work out a viable solution "no later than 24 May 2009." Trademark issues have been defined as one of four overarching issues still to be solved before ICANN can finalise the application procedure for the next hundreds or thousands of top-level domains from .eco to .music. more

Challenging UDRP Awards in Federal Court: Recent Outcomes

Challenging UDRP awards in actions under the Anticybersquatting Consumer Protection Act (ACPA) is infrequent though steady. There are currently a number of court filings in U.S. district courts that are in the early stages, most notably the ADO.com case reported on in an earlier essay and several others have either been referred to mediation (the IMI.case) or settled or discontinued. more

Domain Security: An Underused Cybersecurity Strategy and First Line of Defense in Your Zero Trust Model

Domain security is a critical component to help mitigate cyberattacks in the early stages - your first line of defense in your organization's Zero Trust model. According to the Cybersecurity and Infrastructure Security Agency (CISA), most cyberattacks - including ransomware and business email compromise (BEC) - begin with phishing. Although losses due to ransomware now exceed billions annually, most ransomware protection and response measures don't adequately address phishing risks in the early stages of an attack because they don't include domain security measures to protect against the most common phishing attacks. more

The [Dot]Brand Tribes - Part 3

In part two of The [Dot] Brand Tribes we argued that introducing new branded generic Top-Level Domains (gTLDs) would bring value to brand owners and have positive effects on customer recognition. In this last post we'll continue that theme and talk about how brand owners can come together to provide shared spaces using the banking industry as an example. more

How Long Does a URS Case Take?

The Uniform Rapid Suspension System (URS) -- which allows a trademark owner to suspend certain domain names, especially those in the "new" gTLDs -- was designed as a quicker and less-expensive alternative to the Uniform Domain Name Dispute Resolution Policy (UDRP). As I've written frequently before, there are significant differences between the URS and the UDRP. One of those differences is how long a typical proceeding lasts. more

Deadline of Feb 1 for Nominations for Public Interest Registry (.ORG Operator) Board of Directors

Would you be interested in helping guide the future of the Public Interest Registry (PIR), the non-profit operator of the .ORG, .NGO and .ONG domains? If so, the Internet Society is seeking nominations for three positions on the PIR Board of Directors. The nominations deadline is 23:00 UTC on Thursday, February 1, 2018. Find out more about the positions and the required qualifications. more

Domain Name Security Gains Prominence in German-Speaking World

The 2010 Domain Pulse, hosted by SWITCH (the .CH registry) was held in the snowy Swiss city of Luzern. Domain Name Security (DNS) was of particular importance in this year's meeting with DNSSEC being implemented in the root zone in 2010 by ICANN, and by many registries in the next few years. ICANN plan to have all root servers signed with DNSSEC by mid-2010 Kim Davies, Manager, Root Zone Services at ICANN told the meeting, starting with the L root server, then A root server with the last being the J root server as all are gradually signed. more

How to Suspend a .US Domain Name

Although rarely used, the usTLD Rapid Suspension Dispute Policy (usRS) allows a trademark owner to seek the suspension of a domain name in the .us country-code top-level domain (ccTLD). The usRS has many things in common with the Uniform Rapid Suspension System (URS), which applies to domain names in the new generic top-level domains (gTLD). more

A Cautionary Tale of Reputation Damage: Striking the Right Balance With Brand Protection

In early March 2020, a well-known European fashion brand found themselves on the receiving end of a protest campaign on social media. The background to the case was the fact that, in 2019, the brand had launched a cease and desist (C&D) action against a small, U.K.-based company in response to their use of similar product names and sale of associated clothing merchandise. more