Domain Names

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

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

Why Domain Security Is Your First Line of Defense to Mitigate Phishing Attacks

According to the Cybersecurity and Infrastructure Security Agency (CISA), most cyberattacks, including ransomware and business email compromise, begin with phishing. Although losses due to ransomware now exceed billions annually, most ransomware protection and response measures don't protect against the most common phishing attacks. Established research shows that phishing attacks most commonly occur from a maliciously registered, confusingly similar domain name, a compromised or hijacked legitimate domain name, or via email header spoofing. more

One Step Closer to an Accountable ICANN

We believe that certain updates in the latest draft that limit the scope of ICANN's Mission, as specified in paragraph 188, could explicitly prevent ICANN from actively enforcing its contracts with Registries and Registrars or use contracts as a tool to implement consensus policies in the future. We suggest in our comments that revised bylaw text be added explicitly stating that the enforcement and creation of ICANN's contracts with Registries and Registrars... more

ISOC-NY Event: dot nyc - How Are We Doing? (Sat Apr 10)

Joly MacFie writes: Last October the NYC Department of Information Technology & Telecommunications (DoITT) issued a request for proposals for "services to obtain, manage, administer, maintain and market the geographic Top Domain name .nyc.". At ICANN's recent 37th meeting in Nairobi, consensus was reached on the "overarching" issue of intellectual property protection. This leaves only the issue of the final (4th) draft of the Applicants Guidebook, expected before the 38th meeting in Brussels in June 2010... 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

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

Close to 6 Million Domain Names Registered in Q4 2011, Total Passes 225 Million Worldwide

According to the latest Domain Name Industry Brief from VeriSign, Inc., the fourth quarter of 2011 closed with a base of more than 225 million domain name registrations across all Top-Level Domains (TLDs) -- an increase of 5.9 million domain names, or 2.7 percent over the third quarter. Registrations have grown by more than 20.4 million, or 10 percent, since the fourth quarter of 2010, according to the report. more

Brand Protection Beyond the “Whack-a-Mole” Approach

I recently shared at a conference how a seasoned brand and fraud expert from one of the world's largest global financial institutions lamented a major attack where multiple fraudulent websites would pop up every single day. All attacks were launched from the same registrar and web hosting company, and no matter how much they reached out to these providers, they received the same reply: "we will pass on your request to the registrant or site owner," and then nothing happened. more

The Continuing WHOIS Disappearing Act

WHOIS is about to become even harder to find. ICANN has recently concluded long-delayed contract negotiations with industry meant to accommodate the technical migration from the WHOIS protocol to the Registration Data Access Protocol (RDAP). Instead of limiting the changes to what's necessary to implement the new technical protocol, the proposals effectively gut WHOIS, making it virtually impossible to find by eliminating web-based WHOIS access... more

PIR Reaches 11 Million .ORG Domains, Citing Growth and Online Safety Efforts

Public Interest Registry (PIR), the nonprofit managing the .ORG domain, recently announced it now oversees 11 million registrations. Jon Nevett, PIR's CEO, attributes this growth to what he describes as a "responsible" expansion, emphasizing a focus on security and community support. more

Beyond WHOIS: CircleID and Edgemoor Research Institute Second Event on ‘Filling the Gaps’

Experts at a CircleID and Edgemoor Research Institute webinar debated the challenges of domain registration data access in a post-GDPR world. Panelists explored the tension between privacy laws and legitimate data requests, the role of automation in disclosure decisions, and the need for a scalable, trust-based framework to balance compliance, cybersecurity, and enforcement interests. more

Is Booking.com a Generic Term?

A fundamental rule of trademarks is that they have to be distinctive, and that nobody can register a trademark on a generic term like "wine" or "plastic." In a case decided today by the U.S. Supreme Court, the court decided 8-1 that online travel agent Booking.com could register its domain name as a trademark. In this case, I think the majority got it wrong, and Justice Breyer's lone dissent is correct. more

White House Calls for a Meeting with Domain Registrars, Registries, and ICANN

Brian Krebs reporting in Krebs on Secruity: "The Obama administration is inviting leaders of the top Internet domain name registrars and registries to attend a three-hour meeting at the White House next month about voluntary ways to crack down on Web sites that are selling counterfeit prescription medications..." 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