201911.12

Press review on counterfeiting (October 2019)

IP Twins Online counterfeiting: Cdiscount cannot be held liable .BANK and .INSURANCE: fTLD on governance principles UDRP: pabloescobar.com, transferred 20 years after its registration .BOND : sunrise period starts on 17 October 2019 .EU: opening to European expatriates New gTLD: .NEW is coming! Domain Names: the top level domains of the fashion industry Press review…

201911.11

Bringing Chinese counterfeiters before French courts

Recently, Cdiscount was criticized for not having disclosed the identity of alleged counterfeiters. However, it turned out that the information needed to identify these merchants were available on Cdiscount and that they had indicated a postal address in China (Online counterfeiting: Cdiscount cannot be held liable, iptwins.com, 24 Oct. 2019). Like many others, this case…

201910.24

Online counterfeiting: Cdiscount cannot be held liable

Jansport Apparel Corp. (JAC), the manufacturer of bags and travel accessories that owns “Eastpak” trademarks, noted that several companies based in China were offering counterfeits of its products on Cdiscount. It appears from the judgment that JAC was “unable to directly contact the sellers,” which led genuine manufacturer, at first, to send to Cdiscount cease and…

201910.24

.BANK and .INSURANCE: fTLD on governance principles

.BANK and .INSURANCE are administered by fTLD Registry Services, LLC (fTLD), a coalition of banks, insurance companies and professional associations in the financial services industry. fTLD operates .BANK and .INSURANCE for the benefit of the community in accordance with the ICANN Registry Agreement (fTLD.com). In a recent press release, fTLD reiterated its commitment regarding the…

201910.16

UDRP: pabloescobar.com, transferred 20 years after its registration

In this UDRP proceeding (NAF, FA1908001859584, Escobar, Inc. v. Neil Okrent / Ivan Munguia, October 7, 2019), the complaint originated from a Colombian company with at least unusual and tumultuous history: Escobar, Inc, created in 1984 by Pablo Escobar and managed by his brother, Roberto. The complainant sought to obtain the transfer of the domain…

201910.15

.BOND : sunrise period starts on 17 October 2019

The .BOND top-level domain, originally acquired by the University of Bond (Queensland, Australia) and now owned by ShortDot (the owner of .ICU), will be available from October 17, 2019. ShortDot targets the financial sector as a priority, while inviting people to give free rein to their imagination.

201910.15

.EU: opening to European expatriates

The .EU Top Level Domain Registry (Eurid) has opened the eligibility criteria. As of 19 October 2019, citizens of the European Union who live abroad will be allowed to register .EU domain names (Eurid.eu).

201910.11

New gTLD: .NEW is coming!

.NEW Charleston Road Registry Inc. (Google) brings the .NEW from October 15, 2019. The sunrise period will continue until January 14, 2020. Registration is strongly recommended. IP Twins advises and accompanies you.

201910.11

Domain Names: the top level domains of the fashion industry

Fashion brands are often made up of family names (especially older brands) or common names. In both cases, the make-up of the brand means that the company that owns it necessarily face limits as part of their portfolio management strategy for domain names, either in terms of communication or for the purpose of the defense…

201910.01

Press review on counterfeiting (September 2019)

Cambodia 1. The governmental anti-counterfeiting committee is about to sign a memorandum of understanding with the European Chamber of Commerce (Eurocham) to fight the import, production and distribution of counterfeits in the kingdom. – phnompenhpost.com, 2019-09-10. Cambodia and Thailand 2. The Cambodian and Thai authorities jointly organized a workshop on the fight against counterfeiting, a…

201909.22

Press review on counterfeiting (August 2019)

IP Twins UDRP – buyjuul.com or a reminder of the importance of the OKI DATA case law in the presence of commercial websites. WIPO, the new dispute settlement institution for “Chinese” domain names. Press Cameroon 1. Dozen of boxes containing counterfeit drinks (Martini) have been discovered. – Cameroon-tribune.cm, 2019-08-07. –Ecomatin.net, 2019-08-14. Canada 2. A shopkeeper…

201908.02

WIPO, the new dispute settlement institution for “Chinese” domain names

The Arbitration and Mediation Center of the World Intellectual Property Organization (WIPO) has announced (Wipo.int, 2019-08-01) that it has been designated by China Internet Network Information Center (CNNIC), the Chinese Registry, to administer disputes over “Chinese” domain names. WIPO joins the two branches of the Asian Domain Name Dispute Resolution Center authorized to administer cases…

201907.31

Press review on counterfeiting (July 2019)

IP Twins UDRP: transfer of Mandela.org to the guardians of Nelson Mandela’s memory Nominet DRS: the number of proceedings slightly downz EUIPO / Europol report on counterfeiting: focus on organized crime Rueducommerce.fr sentenced for trademark infringement kingofpop.com: Michael Jackson’s rights holders and other celebrities facing domain name issues Renewal of Registry Agreement with Public Interest…

201907.27

UDRP: transfer of Mandela.org to the guardians of Nelson Mandela’s memory

Representatives of Nelson Mandela’s memory have obtained the transfer of the domain name mandela.org following a UDRP process administered by the Arbitration Center and of Mediation of the World Intellectual Property Organization (WIPO, D2019-0372, The Trustees for the Time of the Nelson Mandela Foundation Trust v. Domains By Proxy, LLC / Rafael Trevisan, Trevis, Inc.,…

201907.25

Nominet DRS: the number of proceedings slightly down

The UK Domain Name Dispute Resolution Service unveiled figures for the year 2018 (Nominet.uk). The DRS team administered 671 procedures, which is the lowest volume since the service was created. The year 2012 remains a dark year with 818 procedures. Domain names were transferred in 49% of cases. Nominet indicates an assessment of the costs…

201907.24

EUIPO / Europol report on counterfeiting: focus on organized crime

The cooperation between the European Intellectual Property Office and Europol resulted in the publication of a new report on the evolution of intellectual property crime (EUIPO and Europol, Intellectual Property Crime Threat Assessment 2019). The authors of the report recall the consequences of counterfeiting on economic, health and environmental grounds. From the outset, OEUPI and…

201907.22

Press review on counterfeiting (June 2019)

By IP Twins Press review on counterfeiting (May 2019) 2019 Report of the European Observatory on Infringements of Intellectual Property Rights Chinese Legislation to Give Better Protection to Trademark Owners this November Do you have insurance covering risks related to intellectual property? .BJ: Redelegation of the Benin ccTLD GAY: general opening planned for 11 October…

201907.13

Rueducommerce.fr sentenced for trademark infringement

Carré Blanc Expansion (Carré Blanc) holds the French trademark “Carré Blanc” (No. 07 3534 168) for classes 24, 35 and 38 (fabrics for textile use, household linen, tablecloths, sheets, fabrics for lingerie. It also owns the domain name carreblanc.com which it uses to promote and sell its products. Rue du Commerce is an e-commerce platform…

201907.01

GAY: general opening planned for 11 October 2019

On May 23, 2019, Top Level Design, a registry of several new gTLDs, signed the registry agreement for the administration of .GAY with the Internet Corporation for Assigned Names and Numbers (ICANN). A few days earlier (May 17, 2019), Top Level Design announced that the general opening of .GAY was planned for October 11, 2019….

201907.01

domaine.au: opening on October 1st, 2019

In 2016, the Australian registry (auDA) approved the opening of second level domains (domaine.au). It will soon be a reality (auda.org). In a temporary document, auDA indicated that this liberalization of the registration rules should take effect on 1 October 2019. The registration of a domain.au will nevertheless be subject to the requirement of an…

201907.01

.BJ: Redelegation of the Benin ccTLD

The management of the geographical top level domain .BJ (ccTLD which designates not Beijing, but Benin) has been delegated to the l’Autorité de Régulation des Communications Electroniques et de la Poste du Bénin (ARCEP), created in 2014. In 2017, ARCEP launched a call for tenders for the selection of a registry operator for the .BJ…

201906.19

Do you have insurance covering risks related to intellectual property?

The Ponemon Institute (with the support of AON) is providing a valuable study that deals with insurance related to risks regarding cybersecurity and intellectual property. The research team behind this study collected responses from 2,348 participants in North America, Europe, the Middle East, Africa and Asia-Pacific, all professionals involved in IT risk management. The study…

201906.07

2019 Report of the European Observatory on Infringements of Intellectual Property Rights

The European Union for Intellectual Property Office (EUIPO) released its report on the state of intellectual property infringement: “2019 Status report on IPR infringement. Why IPR are important, IPR infringement and the fight against counterfeiting and piracy (euipo.europa.eu). This report presents the results of the research constantly carried out by the European Observatory on IPR infringements…

201906.06

Press review on counterfeiting (May 2019)

By IP TWINS Expired domain names: there are more risks than appears .com is the main beneficiary of errors on website addresses ICANN Approves the CIIDRC as a UDRP Institution USTR Releases 2018 Report on IP Protection and Review of Notorious Markets Thesun.com: “the sun shines for everyone” A natural person receives $100,000 fine as…

201906.05

What does the IFOP study for UNIFAB reveal about online counterfeiting?

UNIFAB (Union des Fabricants) is a French non-profit association whose purpose is the defense and promotion of intellectual property rights. It brings together many companies and associations from all other the world, representing in kind of industries. The experience, the expertise and the network of Unifab make it a major player in the combat against counterfeiting…

201905.27

A natural person receives $100,000 fine as liable under Canada’s anti-spam law

In a decision dated April 23, 2019, the Canadian Radio-television and Telecommunications Commission (CRTC), an independent administrative authority, found Mr. Brian C., as a natural person, responsible for violating Canada’s anti-spam legislation and sentenced him to a monetary penalty of 100,000 CAD (Compliance Decision and Investigations CRTC 2019-111, 23 Apr. 2019). Between September 2014 and…

201905.21

Monetizing dormant domain names by a license agreement

Of the 348.7 million domain names registered (Verisign.com, The Domain Name Industry Brief, Vol 16, Issue 1, March 2019), many of them are dormant: either they are not activated or, if they are, they only designate a parking page. There is another way to monetize a domain name: the license agreement. Admittedly, this solution can…

201905.19

ICANN Approves the CIIDRC as a UDRP Institution

By resolution of May 3, 2019, the Board of Directors of the Internet Corporation for Assigned Domain Names (ICANN) approved the Canadian International Internet Dispute Resolution Center (CIIDRC) as a dispute resolution service provider for domain names under the Uniform Domain Name Disputes Resolution Policy (UDRP) (icann.org, 2019-03-19). CIIDRC submitted its proposal in November 2018…

201905.12

Thesun.com: “the sun shines for everyone”

Can trademark owners such as “The Sun” prohibit third parties from registering domain names that are identical to those trademarks? The issue raised is that of weakly distinctive trademarks because of the genericity of the word or words of which they are composed. Owners of such trademarks are inexorably exposed to stiff competition in the…

201905.10

2018 Out-of-Cycle Review of Notorious Markets: domain names

The role of registrars Each year, the USTR collects complaints from intellectual property rights holders. For the year 2018, the Alliance for Safe Online Pharmacies, ASOP Global, shared its experience in a letter to the USTR on October 5, 2018. In this contribution, ASOP Global intended to address the problem of illegal drugs at the…

201905.10

2018 Out-of-Cycle Review of Notorious Markets: Online Marketplaces

The B2C and B2B platforms known for their difficulties or their unwillingness to fight counterfeiting appear each year in a document prepared by the Office of the United States Trade Representative (“USTR”) entitled “2018 Out- of-Cycle Review of Notorious Markets” (ustr.gov). Each edition is an opportunity to recall the consequences of counterfeiting on safety and…

201905.08

Press review on counterfeiting (April 2019)

On IP Twins Twenty years of imprisonment incurred for a domain name Intellectual Property and Sport: Some Aspects and Tips for World Intellectual Property Day HKIRC launches its registry lock A new cityTLD is coming: .MADRID New gTLD : get prepared for the .MUSIC domain names Valeo wins historical IP case at the Supreme People’s…

201904.29

Twenty years of imprisonment incurred for a domain name

The frightening epic of Mr. Adams darkens. Adams is the founder of “State Snaps”, a social network with licentious content. Since followers of this social network had adopted the slogan “Do it for state”, Adams wanted to acquire the domain name doitforstate.com, whatever the cost. But the owner of the domain name refused to sell…

201904.23

A new cityTLD is coming: .MADRID

The Spanish capital has a city-TLD .MADRID. Each and every new Top-Level-Domain is a new gateway for cybersquatters to find new opportunities, whether the new Top-Level-Domains are gTLDs (examples are recurrent as the following table shows) or geoTLDs (see, among many examples, that of ritzcarlton.tokyo). Initially scheduled for April 2019, the sunrise period will run…

201904.23

New gTLD : get prepared for the .MUSIC domain names

The wait is (almost) over! The .MUSIC new gTLD had naturally attracted many registry applicants, including Amazon, Donuts and Google. After a few Legal Rights Objections and Community objections procedures, DotMusic Limited Foundation was finally designated as the .MUSIC registry. Its program includes an advisory committee in which all the stakeholder of the music industry…

201904.14

Trademarks and domain names: it’s hard to be an acronym trademark!

At the conclusion of the WIPO D2019-0263 case, the panelist rejected the request from Groupement des cartes bancaires to obtain the transfer of the domain name cb.markets (WIPO, D2019-0263, Grouping Bank Cards v. Domain Administrator, Coinbase, Inc., April 2, 2019, denied). It is essentially on the ground of the criterion relating to the right or…

201904.08

Press Review on Counterfeiting (March 2019)

On IP Twins: Amazon Project Zero: a project to eliminate counterfeiting on Amazon platforms Cyber attacks on the DNS: ICANN urges to deploy the DNSSEC protocol Sogou targeted by a class action due to an increase in counterfeit sales Press review on counterfeiting (February 2019) WIPO Statistics: Cybersquatting Complaints Hits a New Record Domain name…

201904.05

Memorandum of the White House on the Fight Against Counterfeit and Piracy Goods

The White House has issued a memorandum on the fight against counterfeiting. Président Trump plans to step up the government’s efforts in the fight against online counterfeiting. He plays on a more coordinated approach of the federal government, the institutions concerned and all the actors: “Third-party intermediaries, including online third-party marketplaces, carriers, customs brokers, payment…

201904.04

Alibaba Anti-Counterfeiting Alliance: “1,277 suspects arrested in 2018”

Alibaba’s Anti-Counterfeiting Alliance (“AACA”) announced that criminal investigations in 2018 resulted in the arrest of 1,277 suspects and the closure of 524 manufacturing and distribution sites. The value of seizures of counterfeit goods is estimated at $ 536.2 million. The AACA was established in 2017. It now has 132 members from a wide range of…

201904.03

OECD-EUIPO 2019 Report on Counterfeiting

The Organization for Economic Co-operation and Development (OECD) and the European Union Intellectual Property Office (EUIPO) have published their 2019 report on trends in counterfeiting. It is based on data collected from 2014 to 2016. The previous report, based on data from 2011 to 2013, was published in 2016. Overall, the authors of the report…

201903.28

New gTLDs: Do not forget the preventive registrations!

Since the new gTLDs offer new opportunities for brand owners, they also offer cybersquatters the same opportunities. It suffices to observe the (more or less recent) decisions made under the auspices of the World Intellectual Property Organization to note an upsurge in cybersquatting by the registration and use of non-similar domain names (typosquatting) but identical…

201903.15

WIPO Statistics: Cybersquatting Complaints Hits a New Record

Unsurprisingly, there has never been so much cybersquatting. Figures from the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center indicate that “the number of cybersquatting cases at WIPO increases by 12% to reach a new record in 2018” (wipo.int, March 15, 2019). WIPO is one of the institutions accredited by the Internet Corporation for…

201903.13

Press review on counterfeiting (February 2019)

Africa According to Ecofin, sub-Saharan Africa loses $10 billion because of counterfeit tobacco (agenceecofin.com, 4 Feb. 2019). Algeria A jeweler craftsman from Ath Yenni reveals his concern over counterfeit jewelry from China (depechedekabylie.com, 12 Feb. 2019). Brexit Drug manufacturers are worried. In the event of a Brexit without an agreement, the British could not benefit…

201903.11

Sogou targeted by a class action due to an increase in counterfeit sales

The Sogou search engine faces a class action brought by investors who claim to have been unaware of serious regulatory problems when it was listed on the New York Stock Exchange (NYSE) in November 2017. The Sogou company allegedly failed to specify the Chinese authorities were investigating an increase in sales of counterfeits. According to…

201903.04

Cyber attacks on the DNS: ICANN urges to deploy the DNSSEC protocol

In recent weeks, several authorities have reported an upsurge of coordinated malicious acts against the Internet Domain Name System (“DNS”) infrastructure, the backbone of the Internet. Ongoing attacks raise concerns about their persistence, magnitude, and the concomitant use of several methods. On January 10, 2019, based on reports issued by companies specializing in cybersecurity, the…

201903.04

Amazon Project Zero: a project to eliminate counterfeiting on Amazon platforms

A few days ago, Amazon seemed to be in a turmoil recognizing the possibility of increased judicial and financial risk due to the endemic flood of counterfeits that invades its platforms. Now the e-commerce giant is trying to beat all odds with its aptly named “Amazon Project Zero“. This new tool aims to eradicate counterfeiting…