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
WHOIS issues are looming large for the ICANN meeting next week, starting with an all-day WHOIS Policy Review on Sunday (background). WHOIS is a subject that has been the recent topic of a number of issues including a debacle over potentially disclosing the identities of compliance reporters to spammers and criminal domainers. more
The ICA has just dispatched a letter to Assistant Secretary of Commerce Lawrence Strickling in advance of the talks scheduled in Brussels on February 29-March 1 between ICANN's Board and its Governmental Advisory Committee (GAC). Our letter expresses strong concerns that the positions being advocated by the U.S. government and the GAC regarding the proposed Final Applicant Guidebook (AG) for new generic Top-Level Domains (gTLDs) would be detrimental to ICANN's multi-stakeholder policy process and would undermine the rights of legitimate registrants at new gTLDs. more
In the last few years, ICANN has made huge strides in Protecting Trademarks within new generic Top-Level Domains (gTLDs). Now much more is being asked. Is it right? Is it appropriate? Will these changes make the new gTLDs unusable for the very communities we most hope will want them: developing countries, developing communities, new businesses, growing organizations and all the people born in the future? more
Sell a trademark as a keyword for directed search or online auctions and make $billions. But use a trademark in a domain name for direct search and lose the domain, or worse. The gap between how trademark law treats the two species of search has grown wider in the wake of several landmark 2010 trademark law decisions -- and provides another sound reason why ICANN should not establish any new rights protections for new generic Top-Level Domains (gTLDs) beyond those STI-RT compromise positions already included in the fourth version of its Draft Applicant Guidebook (DAGv4). more
Dialogue is the only way to end cybersquatting. Distrust between brand owners and domain owners (with an assist from some cockeyed business incentives) has turned a problem into a very expensive vicious cycle. Now that ICANN is about to launch new top-level domains (TLDs), negotiations must start immediately or both sides will pile up further loses. Here's how the problem plays out now. more
Complainant sells RV parts and accessories in the eastern part of Tennessee. Respondent, no stranger to UDRP proceedings, registers domain names and sets up pages with pay-per-click ads related to the subject of the words in the domain name. Though Complainant had been operating on the web since mid-2004, which is the same year it incorporated, it claimed that its predecessor in interest had been using the ADVENTURERV trademark since 1989. more
Minds + Machines reports: "A quantitative analysis of UDRP data for all open generic Top-Level Domains (gTLDs) concludes that the introduction of new gTLDs will result in approximately 316 new cases of cybersquatting, and that the resultant cost to trademark holders, overall, will be $870,000 per year -- less than less than $.10 for each trademark registered worldwide, or about $.44 per trademark registered in the United States. The data show that cybersquatting correlates to registration volume across all open gTLDs, not to the number of gTLDs, but is more prevalent in .com." more
For the benefit of trademark owners, ICANN has something called the UDRP (Uniform Dispute Resolution Process) that allows the owner to file a complaint against an allegedly infringing domain name, to be resolved by one of a small set of arbitrators. About 90% of UDRP cases that proceed to a decision are decided in favor of the complainant; opinions differ as to whether that's because of the merit of the complaints or the institutional bias of the arbitrators. more
To say that it's been quite a year in the world of domain names would be an understatement. From compromised country code Top-Level Domains (ccTLD) registries, to the delay of new generic Top-Level Domains (gTLDs), some of the events of the past year have been surprising, while others could easily have been predicted. Regardless of whether you could have seen these coming, please find below my list of 2009's most important domain name events...at least, as I see them. more
In the midst of ICANN's decision to ask the Generic Names Supporting Organization (GNSO) to create proposals on trademark protection mechanisms, the World Intellectual Property Organization (WIPO) announced that it will launch a fast-track UDRP process... The WIPO move is flawed and creates various problems. Here is an account. more
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
Upon being appointed as ICANN's new CEO in Sydney, Rod Beckstrom gave a rousing speech in which he stressed the vital importance of free expression on the Internet... Many ordinary, powerless people are indeed willing to fight and die. But is ICANN going to help them? Or at very least make sure that their decisions won't help those who want to muzzle them? more
The ICANN Implementation Recommendation Team (IRT) working group has published its final report, which I decided to analyze a bit further. I already made a few comments last month, both in the At-Large Advisory Council framework and on my own. There are several issues raised by the recommendations of this report. The Uniform Rapid Suspension system (URS) is one. more
ICANN realized during the Mexico City public meeting that its draft proposals for new generic Top-Level Domains (gTLDs) did not take sufficient account of the trademark problems that might arise if the new top level domains become havens for cybersquatters. ICANN sensibly asked the trademark and brand owners to propose rules and procedures that might address these problems... more
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