Domain Names

Another Registrant Loses UDRP Where Trademark ‘Spans the Dot’

Here's another example of a domain name dispute where the top-level domain (TLD) was essential to the outcome of the case -- because it formed a part of the complainant's trademark: mr.green. In this decision under the Uniform Domain Name Dispute Resolution Policy (UDRP), the panel joined a short but (slowly) growing list of disputes in which the TLD plays a vital role. more

New Report Uses Media Impressions as a Measure for New TLD Usage and Success

With so many new domain extensions now available in the online space, it is very hard to measure the success of an individual TLD (Top Level Domain). There have been various methods used, such as total domain registration count, hosted live sites in the Alexa top-million, premium domain sales, aftermarket value, etc. Many of these metrics do help in understanding a new extension's progress, however, top-line registrations alone do not tell a complete story. more

The Top 10 .Brand Moments of 2017

Each year in December, I sit down and take a moment to reflect on how the .brands space has progressed in the previous 12 months. Most folks will understand that starting a movement to create the next evolution of the internet with 'digital superbrands' was a little slow at first. Slowly but surely, that has started to change and especially in 2016, it really felt like people were starting to 'get it' -- both in terms of brands themselves, and the media and consumers. more

So, You Claim to Have an Unregistered Mark! Is there Cybersquatting?

Complainants have standing to proceed with a claim of cybersquatting under the Uniform Domain Name Dispute Resolution Policy (UDRP) if the accused "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights" (4(a)(i) of the Policy). Quickly within the first full year of the Policy's implementation (2000) Panels construed "rights" to include unregistered as well as registered marks, a construction swiftly adopted by consensus. more

2017 Domain Name Year in Review

Given that it's been a few years since my last domain name year in review, I've really enjoyed looking back at this year's biggest domain name stories and seeing how this industry has evolved. This year, in particular, has seen some notable changes which are likely to impact the domain name landscape for years to come. So without further ado, here is my list for 2017. more

Domain Name Disputes Deja Vu: Panavision.com and Panavision.org

History, it has been said, repeats itself. The same can be said of domain name disputes, as demonstrated by a pair of cases involving the same trademark ("Panavision") filed more than 20 years apart with remarkably similar facts. I can't hear the name "Panavision" without thinking about the origins of domain name disputes, so a decision involving panavision.org - coming more than two decades after litigation commenced over panavision.com - immediately made me nostalgic. more

Significant Increase in Registry Locked Names Across Top 500 Most Highly-Trafficked Sites

A recent study conducted by Brandsight has revealed that 28% of the top 500 most-highly trafficked sites now employ registry locking. In contrast, only 15% of the top 500 most highly-trafficked sites were leveraging registry locking in 2013. Back in 2013, only 356 of the top 500 most-highly trafficked sites could be registry locked, but that number has also risen significantly so that now 396 of the top 500 most-highly trafficked sites are eligible. more

CENTR Reports TLD Slowdown Partly Due to Deletes by Chinese Investors Which Had Peaked in 2016

The Council of European National Top-Level Domains Registries (CENTR) in its quarterly report released today, says global domains under all TLDs have contracted slightly due to declines in several larger new gTLDs. more

Long-held Domain Names Transferred to Complainants

There has lately been a number of long-held investor registered domain names transferred to complainants under the Uniform Domain Name Dispute Resolution Policy (UDRP). Two of the domain names were registered 23 years ago. This has provoked several commentators to complain that the UDRP is tilted in favor of mark owners and trademark-friendly panelists expressing hostility to the domain industry. I think we have to dig deeper than this. more

Vulnerabilities of Weak Marks and Uncurated Websites

Dictionary words, alone, combined as phrases, modified by other parts of speech, and single letters that function as marks also retain in parallel their common associations that others may use without offending third-party rights. As a rule of thumb, generic terms are not registrable as marks until they perceivably cross a threshold to suggestive and higher classifications. more

ICANN Issues Guidance to Domain Registrars and Registries in Light of Hurricane Maria

ICANN has issued a guidance notice to registrars and registries in relation to Hurricane Maria, which caused massive damage throughout the Caribbean. This isn't the first time that this has happened, with a previous incident in Asia triggering action from both registrars and registries to give domain name registrants impacted by the natural disaster breathing space. more

When UDRP Consolidation Requests Go Too Far

Although including multiple domain names in a single UDRP complaint can be a very efficient way for a trademark owner to combat cybersquatting, doing so is not always appropriate. One particularly egregious example involves a case that originally included 77 domain names -- none of which the UDRP panel ordered transferred to the trademark owner, simply because consolidation against the multiple registrants of the domain names was improper. more

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

Confusing Similarity of Domain Names is Only a ‘Standing Requirement’ Under the UDRP

WIPO's newest overview of the Uniform Domain Name Dispute Resolution Policy (UDRP) succinctly states what decisions have made clear through the years: The UDRP's first test is only a "standing requirement." Standing, under the law, simply means that a person or company is qualified to assert a legal right. It does not mean or imply that one will necessarily prevail on any claims. The UDRP includes a well-known three-part test that all trademark owners must satisfy to prevail, but the first element has a low threshold. more

EFF Warns ICANN Not to Engage in Censorship, Says It Should Stick to Technical Role

A series of articles published by EFF, coinciding with ICANN's 60th meeting in Abu Dhabi this week, Jeremy Malcolm warns that domain name registrars, registries and ICANN can become "free speech week leaks" for online censorship. more