Domain Names

Quintessential and Other Acts of Bad Faith in Acquiring Domain Names

There are two essential differences between the Uniform Dispute Resolution Policy (UDRP) and the Anti-Cybersquatting Consumer Protection Act (ACPA), one procedural and one substantive. The procedural difference is quite minor, a mere quirk that Panels adopted by consensus in the early days of the UDRP and deserves no more than a footnote. Under the UDRP, complainants have standing on proof that they have trademark rights when they file their complaints... more

The New Marketing Vanguard: Domain Extensions (nTLDs)

Back in 2014, hundreds of new Top Level Domains (nTLDs) rolled out into availability. This means that the .com, .gov, and .org extensions that are typically used for business domains were joined by a multitude of other, more specialized extensions such as .attorney, .cars, and .recipes. As a channel partner, it's crucial to know how these new units will influence your presence online. more

Split UDRP Decisions on (Almost) Identical Domain Names

A company called Rocketgate PR LLC, which owns a U.S. registration for the trademark ROCKETPAY, filed two UDRP complaints on the same date against two different domain name registrants - for the domain names and . (The only difference is that the latter domain name is plural.) In both cases, the disputed domain names were associated with inactive websites. The UDRP cases were assigned to two different panelists, who issued their decisions one day apart. more

No Barrier to Reading Across the Dot with New TLDs and Trademark Infringements

Even before the introduction of new top level domains in 2014, Panels had grappled with the before and after the dot issue with country code suffixes. The traditional procedure is to compare the characters of the accused domain names with the characters of trademarks for identity or confusing similarity. But this did not exclude the possibility of reading across the dot. more

U.S. Congressional Trademark Caucus Haggles Over Price

It was standing-room-only at the Congressional Trademark Caucus session in the Rayburn House Office Building in Washington, D.C. on Wednesday, April 6. The topic, brand protection in the new top level internet domain names, is still, it seems, a draw. With nearly two years' experience and statistical evidence of far fewer problems at far lower costs to brand owners than opponents of the program said would occur, it might be expected that the tone would cool. But the price of peace, I guess, remains eternal vigilance. more

One We’ve Been Waiting For: Google Switches TLD Registrar to .Google Domain Name

If you've read my posts before you'll be well aware that as a strong advocate for .brands and the power they have to revolutionise digital marketing effectiveness, I am always eager to share some love with organisations that have taken the leap and launched their .brand TLDs. In recent months we've seen diverse and exciting examples from BMW, the Australian Football League and CERN - just to name a notable few. I have the privilege of advising some of the world's largest companies on their .brand strategy, but one recurring question I hear is "When will we see .google and how will they use it?" more

Running the Gamut: Commentary, Criticism, Tarnishment, Disparagement, and Defamation

The two bookends of speaking one's mind are commentary and criticism, which is indisputably acceptable as protected speech, and (in order of abuse) tarnishment and disparagement. Defamation, which is a stage beyond disparagement, is not actionable under the UDRP, although tarnishment and disparagement may be. In ICANN's lexicon, tarnishment is limited in meaning to "acts done with intent to commercially gain" (Second Staff Report, October 24, 2009, footnote 2). more

Why Overseas Registries Shouldn’t Worry About China’s New Domain Name Regulation

On March 25th, 2016, the Ministry of Industry and Information Technology (MIIT) officially posted its revisions to the "Chinese Measures for the Administration of Domain Names" (2016 edition) for public comment. A decade has gone by since the latest administration measures were introduced in 2004 (2004 edition). Registries and registrars have been longing to see this update for a while, and it is therefore no surprise that the new edition has drawn substantial attention at home and abroad. more

China’s MIIT Clarifies New Domain Name Regulations, Allays Concerns Over Government Interference

A recent clarification to draft domain name regulations by China's Ministry of Industry and Information Technology (MIIT) indicates greater engagement and openness with the domain name market, not a contraction as some had feared. Following the MIIT's announcement on March 25th 2016, the same Ministry issued a clarification on Wednesday March 30th stating that its new draft regulations will not affect any foreign enterprises or foreign websites from resolving in China. more

China’s Draft Rule Targets Domain Name Supervision, Could Limit Access to Foreign Sites

China's government has proposed taking stronger steps towards accessing websites in the country as part of its latest push to set boundaries in the wider Internet. On March 25, the Ministry of Industry and Information Technology (MIIT), which oversees China's internet and telecommunications sectors, released a public draft regulation outlining rules on domain name registrations. more

The Growing Threat of Cybersquatting in the Banking and Finance Sector

The apparent cyber heist of of $81 million from the Bangladesh central bank's U.S. account may cause some people to question the security of online banking. While the online theft prompted SWIFT - a cooperative owned by 3,000 financial institutions around the world -- to make sure banks are following recommended security practices, the incident also could have ramifications for banking customers worldwide. more

ICANN 55, Marrakech: Witnessing a Historic Event, Community Empowered Work Continues

Earlier this month, MarkMonitor representatives were privileged to witness, at the first ICANN meeting of 2016 in Marrakech, Morroco, the historic presentation of the plan to transfer the stewardship of key internet functions (IANA) from the United States Government to a community and consensus-based model of governance through ICANN (Internet Corporation for Assigned Names and Numbers). 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

What is the Intellectual Property Constituency (IPC)?

As a longtime member of ICANN's Intellectual Property Constituency (IPC), I'm impressed by the important work that this group does on behalf of trademark owners worldwide (as I've written before). While some die-hard IPC members spend countless (and, often, thankless) hours working virtually and in-person (at ICANN's global meetings) for the constituency, I find it very educational and worthwhile to participate on an ad-hoc basis. more

Charter Approved to Review All Rights Protections Mechanisms in All Generic TLDs

On March 9th, 2016, during its final open meeting at ICANN 55 in Marrakech, Morocco, the Generic Names Supporting Organization (GNSO) Council approved a motion that I proposed to adopt the Charter of the Policy Development Process (PDP) to Review all Rights Protections Mechanisms (RPMs) in all Generic Top-Level Domains. I serve on the Council as one of the two representatives of ICANN's Business Constituency, and my fellow Councilors have designated me to serve as the GNSO's Liaison to the Working Group (WG), and as its Interim Chair. more