Domain Names

Trademark Overreaching and Faux Cybersquatting Claims

Trademarks can be strong in two ways: either inherently distinctive (arbitrary or fanciful marks), or composed of common elements that have acquired distinctiveness (descriptive or suggestive marks). Trademarks can also be weak in two ways: either composed of common elements, or lacking significant marketplace presence other than in their home territories. Panelists have seen them all, even by respondents alleging trademark rights registered later in time to complainant's.

The .Corp, .Home & .Mail Quandary

On 24 August, fifteen applicants for the .corp, .home, or .mail (CHM) new gTLDs sent a letter to the ICANN Board asking for action on the stalled process of the their applications. This points to the answer for the question I asked in march of this year: Whatever happened with namespace collision issues and the gTLD Round of 2012. As the letter from the applicants indicates, ICANN has done little to deal with issues concerned with namespace collisions in the last 2 years. Is it now time for action?

Challenging UDRP Awards in Courts of Competent Jurisdiction

The Uniform Domain Name Dispute Resolution Policy (UDRP) is not an exclusive forum for the resolution of domain names accused of cybersquatting even though registration agreements use the word "mandatory" in the event of third-party claims. The UDRP is mandatory only in the sense that respondents are "obliged by virtue of the [registration] agreement to recognize the validity of a proceeding initiated by a third-party claimant."

The Impact of Reverse Domain Name Hijacking on Supplemental Filings in UDRP Cases

In another blog post, I wrote about the sometimes confusing circumstances in which domain name dispute panelists will consider supplemental, or additional, filings from the parties (in addition to a complaint and response) in cases under the Uniform Domain Name Dispute Resolution Policy (UDRP). I quoted the WIPO Overview, which states, in part, that supplemental filings may be appropriate where a party can "show its relevance to the case and why it was unable to provide that information in the complaint or response."

ICANN the Machine…

ICANN's new gTLD expansion is really quite an ingenious ploy to grow the once small California non-profit into an unstoppable machine, worth hundreds of millions of dollars, which soon plans to finally be free from any external oversight. I have no doubt that ICANN pats itself on the back for pulling the wool over so many eyes, including stakeholders, new gTLD applicants, politicians, and the global general public.

Reselling Domain Names on the Secondary Market: Bona Fide Offering, or Not?

On the question of reselling domain names on the secondary market, a dissenting panelist in a 2005 case observed that "[t]here is no doubt Respondent is in the business of being a reseller of domain names that consist of common English words" and then suggested that the "fundamental question before the Panel is whether or not such a business should be allowed under the UDRP." He concluded that such a business should not be allowed...

Buying Multiple Domains Makes Sense

Companies usually use one single domain name for their online activities but then, more questions pop up: SEO, Infringement, Future of the company, monitoring online competition... If buying multiple domain names answers some of these questions, there is a way to do it. Here is how... It often happens that the domain name of a company is neither the generic keyword of its core business nor a keyword that necessarily appears attached to its name.

The Truth About Supplemental Filings in UDRP Cases

A typical proceeding under the Uniform Domain Name Dispute Resolution Policy (UDRP) consists of a complaint and, sometimes, a response. UDRP Rule 12 makes clear that "further statements or documents from either of the Parties" are appropriate only if "the Panel... request[s], in its sole discretion." In practice, however, such supplemental or additional filings are not uncommon, with the leading UDRP service providers - WIPO and the Forum - issuing guidance about when they may be appropriate.

Fair Use Registration of Domain Names for Artists and Hobbyists

There is in the Anticybersquatting Consumer Protection Act a provision not expressly found in the UDRP (at least, not in so many words) but the concept is nevertheless present in the Policy by construction... The term "fair use" is typically associated with protected speech (criticism and commentary), fan websites, and nominative use of domain names but it is not limited to those uses. It's a flexible principle in both trademark and copyright law.

Why Registry Service Providers Should be Accredited by ICANN

The merits of a Registry Service Provider accreditation programs have been debated across the Domain Industry since the most recent round of Domain Name Registries were introduced starting in 2012. This post discusses the early reasoning in support of an accreditation program; changes in the policy considerations between 2012 and now; the effects of competition on the landscape; a suggestion for how such a program might be implemented; and why such a program should be introduced now.