Domain Names

When Two Trademarks Aren’t Confusingly Similar to One Trademark

As I've written before, domain name disputes involving multiple trademarks sometimes raise interesting issues, including whether a panel can order a domain name transferred to one entity without consent of the other. While panels typically have found ways to resolve this issue, one particularly troubling fact pattern arises when a panel denies a complaint simply because a disputed domain name contains trademarks owned by two different entities. more

New Publication on Updating the Anti-Cybersquatting Regime and Ad-Based Cybersquatting

Sealing the cracks: a proposal to update the anti-cybersquatting regime to combat advertising-based cybersquatting is the title of an article by Christopher Varas in the April issue of the Journal of Intellectual Property Law & Practice. In this article, the author labels "modern cybersquatting" the monetization of domain names through PPC advertisements, and says that brand owners lack effective tools to combat this practice... more

Registering and Monetizing Personal Names

At the top of WIPO's list of the most cybersquatted trademarks for 2015 (issued on March 18, 2016) is "Hugo Boss" with 62 complaints. The report also reveals that the fashion industry led other commercial sectors with 10% of complainant activity. Not surprisingly, in this sector companies (couturiers extending their services to the general public) are branded with the personal names of their founders. Why any registrant would intentionally target well-known personal names in the fashion industry is a mystery because there's no future in it. In fact, complaints are never answered and always successful. more

The New ICANN Emerges in Seoul

With the loud crashing of a traditional drum ceremony and an impromptu electric guitar performance by a young Korean whose rendition of Pachabel has been downloaded sixty million times on YouTube, the 36th meeting of ICANN was kicked off this morning (Korean time) by new CEO Rod Beckstrom and his fellow Directors and assembled one thousand or so participants. ICANN has always been about change, but the atmosphere in Seoul this week is charged with a sense of new challenges and new opportunities. more

How to Dispute a Third-Level ‘Country-Code’ .com Domain Name (Such as nike.eu.com)

Shortly after I recently wrote about WIPO's new role as a domain name dispute provider for the .eu ccTLD, the Forum published its first decision on another type of "eu" domain name: eu.com. The decision involved the domain name nike.eu.com. What makes this case interesting is that it represents one of the few .com domain name disputes that includes a country-code in the second-level portion of the domain name. more

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? more

The Start of Something Big: ICANN Announces Planning for Round Two of New gTLDs

ICANN has published a short paper in advance of its 65th meeting in Marrakech which starts on 23 June 2019. Entitled, "ICANN Org's Readiness to Support Future Rounds of New gTLDs," it describes ICANN's working assumptions for "policy implementation and operational readiness for a subsequent round of new gTLDs". The document is necessary for ICANN to move forward with essential preparations for the next round. more

Does Renewing a Domain Name Count as “Registering” a Domain Name Under the ACPA?

The U.S. Anticybersquatting Consumer Protection Act ("ACPA") is a federal law -- part of the Lanham Act that deals with trademarks and unfair competition. It says that a person can be liable if he or she registers a domain name that contains another's distinctive trademark with a bad faith intent to profit from that mark. One issue that has arisen over the years is whether registration that can give rise to liability means only the first time the domain name is registered, or whether it applies to the re-registration... more

More Privacy for Domain Registrants – Heightened Risk for Internet Users

A recent exchange on CircleID highlighted a critical need for data to inform the debate on the impact of ICANN's post-GDPR WHOIS policy that resulted in the redaction of domain name registrant contact data. A bit of background: in my original post, I made the point that domain name abuse had increased post-GDPR. A reader who works with a registrar (according to his bio) commented: "Can you back up that statement with data? Our abuse desk has actually seen a reduction in abuse complaints." more

A Recap of the 36th ICANN Conference in Seoul, Korea

The recently completed ICANN Conference in Seoul, Korea will be remembered for a unique accomplishment -- the first definitive step towards the addition of Internationalized Domain Names (IDNs) to the Internet root... As the announcement states, the applicants, at this time, are limited to nations and territories; the first IDNs will be in country code top level domains (ccTLDs). The generic TLDs, (the gTLDs, e.g., .org, .com and .info) will have to wait for their opportunity to apply for IDNs... more

Who Cares About 50,000 .CAT’s?

This past May 19th, 5 years after its sunrise, puntCAT arrived at the 50,000 domain names landmark. We know that, nowadays, 50,000 domain names may hardly be described as shocking news, and, certainly, this is not our limit, and we believe there's still plenty of room for .cat to grow. Then, who and why should care about this number? more

Ten Years of UDRP

In 1999, the Internet Corporation for Assigned Names and Numbers (ICANN) developed a policy to resolve disputes between trademark owners and registrants of domain names. This policy, the Uniform Domain-Name Dispute Resolution Policy (UDRP) was made available for disputes concerning an alleged abusive registration of a domain name. In the past 10 years alone, more than 16,000 disputes have been filed resulting in more than 10,000 domain name transfers. more

Corporate TLDs - Why Keeping Mum Seems to Be the Order of the Day

Global brand protection powerhouse MarkMonitor recently released survey results revealing the intentions of their corporate clients with respects to new gTLDs. After reading the report, it's fair to say that I'm not surprised by the results, but continue to be frustrated by them. Where are all of these forward thinking and revolutionary online marketers and brand managers? Are they so unaware of the opportunity that has been placed before them or are they just being very savvy? more

DOJ to Cruz: .Com Price Freeze Can Be Extended to 2024

On August 31st the Department of Justice (DOJ) sent a response to the August 12th letter from Senator Ted Cruz and some Congressional colleagues to the head of the Antitrust Division. In that letter Cruz et al asserted that if the pending extension of the .Com registry Agreement (RA) was granted in combination with the consummation of the IANA transition, that DOJ could be prevented from having "meaningful input into the prices that Verisign charges for registering a domain name within the .com domain for an extended period". more

ICANN’s New gTLD Program Makes Some Progress (... Sort of)

True to form, the outcomes of the ICANN Board's new generic Top-Level Domain (gTLD) Retreat in Norway late last week haven't exactly provided the community with huge amounts of confidence in the fact that the new gTLD program will be finalised this year. But when you read between the lines, we may be able to provide supporters of the program with a little hope... more