Law

Disputes Falling Outside the Scope of the UDRP

The UDRP is a forum of limited jurisdiction designed for trademark owners to combat a certain kind of tortious (sometimes tipping to criminal) conduct by which registrants register domain names with the bad faith intent of taking economic advantage of owner's marks and injuring consumers by beguiling them to disclose personal information. The forum is not open to trademark owners whose claims are outside its scope, even though they may include allegations of cybersquatting.

Declaring and Declining to Find Reverse Domain Name Hijacking

What to one panelist is clearly bad faith conduct in filing a UDRP complaint, to another is excusable for lack of proof. The disagreement over reverse domain name hijacking centers on the kind of evidence necessary to justify it and the nature of the burden. RDNH is defined as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name." Rule 1, Definitions.

Unlawful Targeting of Trademarks and Consumers in Registering Domain Names

Unlike trademark applications which go through a lengthy examination process before advancing to registration, anyone (anywhere in the world) can register a domain name identical or confusingly similar to a trademark - instantly and no questions asked, at least, in the traditional space (the legacy gTLDs)! With the new gTLDs registrants will receive notice of possible infringement if the brands are registered with the Trademark Mark Clearing House, but notices do not function as injunctions to block registrants from registering infringing names.

Using the URS as a Preliminary Injunction for Domain Name Disputes

As I've written before, the Uniform Rapid Suspension System (URS) - the domain name dispute policy applicable to the new generic top-level domains (gTLDs) - is just not catching on. Whether because of its limited suspension remedy, high burden of proof or other reasons, the URS remains unpopular among trademark owners. However, there's one interesting use to which the URS can be put.

Proving Common Law Rights Predating Domain Name Registration

The trademark rights required for standing under paragraph 4(a)(i) of the Uniform Dispute Resolution Policy (UDRP) refer to both registered and unregistered rights. Complainants with registered trademarks satisfy the requirement by submitting their certificates of registration. However, and not surprisingly, complainants with unregistered trademarks have to demonstrate that the alleged marks qualify as such, which requires that complainants prove both secondary meaning of the marks and their distinctiveness prior to the registration of the domain name.

Is the Internet a Tobacco Product?

Audacity by federal policy makers can be admirable, at least in some cases, but it can a bit more problematic in others. A case in point is the Food and Drug Administration's "deeming" of the internet to be a tobacco product. The FDA explained that it was exercising its authority under the Family Smoking Prevention and Tobacco Control Act which gave the agency an extensive set of duties, responsibilities and authorities over "tobacco products."

Reflections on the G7 ICT Ministers Meeting in Japan

On April 30, 2016, ICT Ministers of the "G7 group" concluded their deliberations in the beautiful city of Takamatsu, Kagawa prefecture in Japan. After months of preparatory work and two full days of discussions, the ICT Ministers of the USA, UK, France, Italy, Japan, Canada and Germany plus the European Union issued a joint declaration that: recognizes our digitally connected world; commits to mutual goals and, once again; reaffirms the multistakeholder model for the governance issues facing the deployment, development and evolution of the global Internet.

Cybersquatting & Banking: How Financial Services Industry Can Protect Itself Online (Webinar)

Businesses in the financial services sector are among the most frequent targets of cybersquatters. In this free webinar, I will be joining Craig Schwartz of fTLD Registry Services to provide important information about how domain name fraud is affecting the financial services industries, including banking and insurance, and what businesses and consumers can do to protect themselves online.

Warranties and Representations on Purchasing Domain Names: What are they Worth?

The WIPO Final Report published in April 1999, from which sprung the UDRP the following October, is useful in shedding light on what the assembled constituencies had in mind in agreeing to particularly contentious issues. One of those issues was whether registrants had to actively search trademark records before purchasing domain names. Other than paragraph 2 of the Policy which codifies registrants' representations, there is no guidance as to what registrants must do...

ICANN vs. the Federal Reserve

The Internet is about to go independent. After years of support and supervision, the U.S. Government is about to irrevocably relinquish its control over the Internet by transferring its authority to an independent corporation named ICANN. As part of this push, the current chairman of ICANN posted this article to the Wall Street Journal... What's truly amazing about this piece, is how well it's done... It was only after digesting this piece, that I remembered we are talking about ICANN here.