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…

201902.27

A welcome partnership between a ccTLD registry and a national industrial property office

Afnic (the registry in charge of French ccTLDs, afnic.fr) and the French National Institute of Industrial Property (inpi.fr) have announced a partnership with the view of raising awareness of trademark and domain name owners as to the need to proceed, systematically and concomitantly, with trademarks and domain name registrations. This awareness campaign will, at least…

201902.27

India: towards greater accountability of intermediaries?

Indian authorities are considering amending the Information Technology Act 2000. Article 79 deals with the exemption of intermediaries from liability, imposing on them an obligation of diligence as to the lawfulness of the contents. In the course of 2018, the government informed the elected officials of its determination to modify the legal framework in the…

201902.20

“The Real Threat of Fake Toys”, a White paper from the Toy Association

Founded in 1916, the Toy Association is representing companies that design, produce, license and distribute toys and entertainment products for youth. It has more than 950 members, including Amazon. The Toy Association defends the interests of its members, including the toy safety and brand protection of its members. In this regard, the association has just…

201902.19

Press Review on Counterfeiting (January 2019)

Azerbaijan Azerbaijan plans to strengthen the fight against counterfeit dairy products (trend.az, 25 Jan. 2019). China Hong Kong Customs seized counterfeit garments with a market value of $ 2.5 million after a week-long operation (Champion, Tommy Hilfiger, and Stussy). Nine people were arrested (insideretail.hk, 11 Jan. 2019). Shanghai police dismantled a group of 36 people…

201902.14

Counterfeiting: Amazon Anticipates Increased Judicial Risk

On January 31, 2019, Amazon delivered its annual report to the Securities and Exchange Commission (SEC). After referring to a possible amendment of the US law on the liability of Internet intermediaries, Amazon acknowledged that it could be held liable for the activity of its users, particularly for counterfeiting: “The law relating to the liability…

201902.12

Fighting online counterfeits: a China and India 2018 case law review

Join us at the webinar “Fighting online counterfeits: a China and India 2018 case law review”, Monday, February 18, 2019, 09:30 AM Europe/Paris. China and India have 650 and 475 million Internet users respectively. Although the part of e-commerce in the economy is relatively small, the growth curves are prodigious. Unsurprisingly, this trend comes with…

201901.30

Panorama of Japanese domain names

IP Twins will be in Kobe, Japan, at the ICANN 64 meeting, which will be held from March 9-14, 2019. This is an opportunity to spotlight the Land of the Rising Sun. The Japanese ecosystem of domain names is at the forefront. At the beginning of 2018, the number of .JP domain names exceeded 1.5 million,…

201901.28

.EU: Brexit calendar in case of a no deal scenario. Our advice

EURid, the .EU registry, has timed out two scenarios: in case of a no deal (Scenario 1) and in the event of an agreement between Great Britain and the European Union (Scenario 2). The latter would not start before 31 December 2020. The political context gives Scenario 1 an urgency that requires vigilance and anticipation….

201901.23

Brexit: what solutions for British owners of .EU domain names?

Read the update: “.EU: Brexit calendar in the case of a no deal scenario. Our advices”, iptwins.com, 28 January 2019 The massive rejection of the Brexit draft agreement by the British parliament is embarrassing many British companies. The issue of eligibility for certain top-level domains is one of many others. When the United Kingdom (UK)…

201901.15

Because of the “Shutdown”, SSL certificates have not been renewed and some sites are no longer accessible

In the United States, given the “shutdown”, the US administration did not consider the renewal of SSL certificates (Secure Socket Layer) as a priority. As a result, many government sites (defined by the .GOV top-level domain) are no longer accessible. This is particularly the case of several sites of the judicial administration. SSL certificates secure communications between…

201901.14

.INC: launch postponed, update your calendar!

Originally scheduled for January 16, 2019, the launch of .INC is postponed until March 27, 2019. Eligibility “to be eligible to submit a Registration Request in the Sunrise Period, a Sunrise Applicant must be the registrant of a corresponding TMCH entry and the domain name sought must correspond to the entire eligible text of one…

201901.08

The sunrise period for the new gTLD .DEV starts on January 16, 2019

Google Registry recently announced the upcoming availability of the .DEV top-level domain. 1 Sunrise Period: January 16, 2019 – February 19, 2019 Sunrise period where trademark holders who have submitted their trademark to the Trademark Clearinghouse can register .dev domains. Sunrise for .dev. This means if you are a trademark owner and your trademark has been submitted…

201901.08

Get prepared: the .inc sunrise period is soon

IMPORTANT: Originally scheduled for January 16, 2019, the launch of .INC is postponed until March 27, 2019. See the updated calendar here. Eligibility “to be eligible to submit a Registration Request in the Sunrise Period, a Sunrise Applicant must be the registrant of a corresponding TMCH entry and the domain name sought must correspond to…

201901.07

Press Review on Counterfeiting (December 2018)

Argentina FMC QUIMICA S.A. has reported having detected in Santa Fe, Córdoba and Salta counterfeit of its insecticide “Coragen” (agrofy.com.ar, 12 Dec. 2018). Australia Toyota counterfeit auto parts have been seized, including brake pads that do not meet the safety requirements. A Toyota employee said: “If you buy online and it’s not from an authorized…

201901.01

China: Parliament plans stronger penalties for infringement of intellectual property rights

The Chinese parliament is considering a law that would allow punitive damages in tort cases. This long-awaited bill specifically targets infringements of intellectual property rights. If an intellectual property right is intentionally violated and the circumstances are considered “serious”, the owner of the intellectual property rights will be in a position to claim punitive damages….

201812.19

Did Deadpool Register Avengers’ Domain Names in Bad Faith?

If by chance it came to the idea of Marvel fans to visit the website that is designated by the domain AvengersEndgame.com, they would not see Stan Lee’s work showing Iron Man, Captain America, Hulk, Thor, Black Widow, Dr. Stephen Strange, Black Panther or other superheroes, but the unexpected anti-hero Deadpool! The AvengersEndgame.com domain name…

201812.16

Counterfeit and Piracy Watch List, a European Commission Staff Working Document

Like the Office of the United States Trade Representative (USTR) (see iptwins.com, Nov. 22, 2018 ; iptwins.com, Nov. 20, 2018 ; iptwins Nov. 16, 2018 ; iptwins .com, Nov. 15, 2018 ; iptwins.com, Oct. 19, 2018), the European Commission has built a list of online and physical counterfeit sites (Commission Staff Working Document, Counterfeit and Piracy Watch List,…

201812.11

Press review on Counterfeiting (November 2018)

Algeria The General Directorate of Algerian Customs said that in 2017, more than 700,000 counterfeit glasses were seized nationwide. Mr. Kamel Kadi, head of the office in charge of the fight against counterfeiting Algerian Customs, regrets that some importers resort to methods “that may outsmart customs officers” (Aps.dz, 15 nov. 2018). Cambodia At the “Combatting…

201811.30

Counterfeiting and cybersquatting: more than one million domain names seized

The U.S. Immigration and Customs Enforcement (ICE) announced that last year more than one million domain names of websites infringing intellectual property rights had been seized: approximately 33 600 in criminal proceedings and 1.21 million in civil proceedings (ice.gov, 26 Nov. 2018). ICE reports that industry partners involved in the operation were fully responsible for…

201811.23

bmẉ.com (BMW), e-lẹclerc.com (E. Leclerc), порше.com (Porsche), קוקהקולה.com (Coca-Cola) et al.: Brief Overview of Internationalized Domain Names in WIPO UDRPs

BMW had to initiate a UDRP proceeding to get the domain name bmẉ.com [xn--bm-e3s.com], therefore containing the letter “w” with a diacritic dot. The respondent in the UDRP proceedings did not participate, and the decision appears relatively ordinary. However, it contains a reminder on an obvious but yet necessary legal point: “Previous UDRP panels have…

201811.22

Unifab’s contribution to the list of the most notorious “counterfeit spots”

Every year, the Office of the United States Trade Representative (USTR) collects a list of the most notorious online and physical counterfeit spots that are outside US borders. (Special 301 Out-of-Cycle Review of Notorious Markets). For example, the 2017 report mentions, inter alia, the following marketplaces: DHGhate.com (China), Indiamart.com (India), Taobao.com (China), Vkontakte.com (Russia), and…

201811.20

UDRP: a new dispute resolution institution?

The British Columbia International Commercial Arbitration Center (BCICAC) is considering integrating the list of institutions accredited by the Internet Corporation for Assigned Names and Numbers (ICANN) for the resolution of domain name disputes under the Uniform Domain Name Dispute Resolution Policy (UDRP). The BCICAC would create a new branch called “Canada International Internet Dispute Resolution…