202004.06

UDRP: googlecoronavirus.com, transferred 20 days after registration

Among the countless domain names registered since the beginning of the health crisis and including the terms “COVID,” “COVID-19” or “Coronavirus,” <googlecoronavirus.com> is the first to have been the subject of a published extra-judicial decision (NAF, FA2003001888606, Google LLC v. Ben Ghosh , April 3, 2020). On March 22, 2020, a U.S. court had issued a prohibition…

202004.01

.CYOU: sunrise period from May 14, 2020 to June 15, 2020

Initially, it was Changyou, a Chinese online games company, which had requested and obtained the new gTLD .CYOU (its NASDAQ ticker symbol). But in the meantime, Sohu bought Changyou, and it was under these circumstances that Shortdot acquired the gTLD .CYOU. A few years ago, Shortdot had tremendous success with the .ICU. Shortdot’s marketing strength…

202004.01

New gTLDs : .COMPARE, .DEALER, .SELECT

The new gTLDs .COMPARE, .DEALER, .SELECT will be available soon. .COMPARE: from April 6, 2020 to May 6, 2020 .DEALER: from April 29, 2020 to June 1, 2020 .SELECT: from April 6, 2020 to May 6, 2020 Don’t miss the sunrise periods! Do not hesitate to contact us. There are many cases of cybersquatting (registration…

202003.31

UDRP on medailledebapteme.com: two mistakes not to make

In the D2019-3175 UDRP decision, the parties (Orfeva SARL and M. V. A.) dispute the domain name <medailledebapteme.com>, which, in French, means “baptism medal” or “baptism medallion” (WIPO, D2019-3175, Orfeva SARL v. V. A., 11, March 2020, in French). What is striking when reading this decision is that this dispute should never have been brought before…

202003.30

Covid-19: vigilance against cyber-attacks

On March 22, 2020, a US court issued a prohibition order against the site <coronavirusmedicalkit.com>, which offered a fake vaccine against the coronavirus, presented as emanating from the World Health Organization. At the ministry’s request, Justice Robert Pitman issued a prohibition order requiring immediate action to block public access to this fraudulent site. Remember that…

202003.26

Covid-19: when counterfeiting speculates on the pandemic, panic, and scarcity

The Covid-19 pandemic, which has been raging since the end of December, has aroused among the most unworthy of us inclinations of immorality and inhumanity. Pandemic, panic, and shortage form a bitter cocktail capable of overwhelming the lucidity of the most cautious. Ruthless greed swindlers speculate on the vulnerabilities of a weakened global society to…

202003.18

Whois and GDPR: the US response is underway

The entry into force of the general data protection regulation (GDPR) (eur-lex.europa.eu) on May 25, 2018, caused an earthquake by imposing the silence of most of domain name databases. Since then, Whois records speak only “under duress”. The Internet Corporation for Assigned Names and Numbers (ICANN) resisted as long and as much as it could, but had…

202003.17

Online counterfeiting and consumer safety: commentary on the March 4, 2020 hearings before the U.S. House of Representatives

On March 4, 2020, several members of the Consumer Protection and Trade subcommittee (energycommere.house.gov/subcommittees) — a branch of the Energy and Trade Commission of the House of Representatives of the United States (energycommerce.house.gov) —, held a hearing devoted to the safety of products made available to the public on online market platforms. The debates were mainly chaired by…

202003.12

Cybersquatting: Facebook sues Namecheap and Whoisguard

Facebook is suing the Namecheap domain name registrar and the Whoisguard proxy service in an Arizona court. Facebook accuses the two companies of having registered no less than 45 domain names that infringe the Facebook group brands. Facebook provides some examples of the presumed abusive domain names: instagrambusinesshelp.com, facebo0k-login.com and whatsappdownload.site. . Facebook states that…

202003.10

French Court of Audit on counterfeiting: towards an enhanced obligation of vigilance for e-commerce platforms

On October 31, 2018, the President of the French Parliament had entrusted the French Court of Audit (Cour des comptes) with carrying out an investigation relating to “the fight against counterfeiting”  (Lettre du Président de l’Assemblée Nationale au Premier président de la Cour des comptes, du 31 octobre 2018, Cour des comptes, La lutte contre les contrefaçons….

202003.04

UDRP on ihatedell.com: a transfer decision unrelated to freedom of expression

Following a procedure administered by the National Arbitration Forum, the domain name ihatedell.com was transferred to the complainant, Dell Inc. Contrary to what one might imagine, the decision is unrelated to freedom of expression. First, the ihatedell.com site had nothing to do with any criticism of Dell, Inc., or its products since it was related…

202003.03

United States: Shop Safe Act, a bill to end online counterfeiting

Congress must create accountability to prevent these hazardous items from infiltrating the homes of millions of Americans. The SHOP SAFE Act would make families safer by requiring online sellers to help prevent the sale of counterfeit products to consumers. The 2020s will be marked by a strengthening of the fight against the abuse of intellectual…

202002.25

Brexit and GDPR

The United Kingdom officially left the European Union on January 31, 2020. What about the General Data Protection Regulation (GDPR)? Nominet published a clarifying note (theukdomain.uk, 2020-02-20). The .UK Registry immediately points out, wisely, that the United Kingdom and the European Union have entered a transitional period which poses the status quo while new negotiations…

202002.25

dumbledore.com: weak trademarks don’t work miracles

Among the types of trademarks that suffer from their coexistence with domain names, weak trademarks stand out, and especially acronym trademarks (see, for example, “Trademarks and domain names: it’s hard to be an acronym trademark!“) and generic trademarks (for a typical example, see Thesun.com: “the sun shines for everyone”). Warner Bros. Entertainment Inc. failed to recover…

202002.20

Political cybersquatting: cases under French law

Cybersquatting is the act, in bad faith, of registering a domain name without being able to justify a right or a legitimate interest on this domain name. It regularly strikes political figures, as recently attested by a case involving the current Australian Prime Minister, Mr. Scott Morrison (“Scottmorrison.com.au and Scotty Doesn’t Know or the woes…

202002.10

Blocking websites selling fake watches in France : the harassing fight against counterfeiting

Groupe Richemont, hand in hand with some of the brands that compose it (Cartier, Mont-Blanc, Officine Panerai, Vacheron Constantin, Piaget, and IWC Schaffhausen), had identified websites selling watches on which their brands were affixed without their consent, namely contrefaconmontre.com, repliquefrance.com, and repliquemontre.cn. Groupe Richemont sued Orange, Bouygues Telecom, SFR and Free for interim measures before…

202002.03

The post-Brexit effects on domain names

The United Kingdom left the European Union at midnight January 31, 2020 (CET). The United Kingdom and the European Union have entered a period of transition. This period will last at least until December 31, 2020. During this period, residents and citizens of the United Kingdom can hold and register a .eu domain name (EURid.eu,…

202001.30

Africa: foreign direct investment, trademarks and domain names

The management of international trademark and domain name portfolios is closely linked to investments made by companies, including those made abroad. Investments imply, in many cases, a commercial presence on the host territory, which must imperatively be accompanied by trademark and domain name registrations at the national level and, where appropriate, at the regional level….

202001.29

United States: around twenty priority measures to combat counterfeiting

On April 3, 2019, the White House had published a memorandum on the fight against counterfeiting (iptwins.com, 2019-04-05), in which it asked the heads of the federal agencies concerned to submit a report with the following objectives : (i) Analysis of all the available data that could improve knowledge of the mechanisms that allow or…

202001.20

weleakinfo.com domain name seized by the American authorities

The FBI and the United States Department of Justice announced that they had seized the domain name weleakinfo.com, which was supplying, for a small fee, a search engine intended to acquire personal data obtained illegally. Two people were reportedly arrested in the Netherlands and Northern Ireland (Justice.gov, 2020-01-16).

202001.12

.GAY: Sunrise period from February 10 to March 31

Top Level Design announced the opening of the .GAY TLD. The sunrise period will run from February 10 to March 31, 2020, while the opening to the public is set for May 11, 2020. By offering .GAY, Top Level Design aims to guarantee a safe space for the LGBT community. The registry assures in particular…

201912.20

UDRP: stevejobs.com, transferred 20 years after registration

The year 2019 was marked by the transfer of several domain names identical to the names of celebrities, in particular kingofpop.com (iptwins.com, 2019-07-11), pabloescobar.com (iptwins.com, 2019-10-16) and mandela.org (iptwins.com, 2019-07-27). Stevejobs.com (NAF FA1909001861755, Steve Jobs Archive, LLC v. Jongsubkim, December 11, 2019, transfer) should be added to this list. This domain name was registered in…

201912.19

15 years imprisonment for doitforstate.com

A few months ago, we told the story of Mr. Adams who wished to obtain the domain name doitforstate.com at all costs, and hired Mr. Hopkins whose mission was to compel the domain name holder to transfer the domain to Mr. Adams, under the threat of a firearm. A scenario worthy of a bad thriller…

201912.05

Press review on counterfeiting (November 2019)

IP Twins To Brexit or to Party ? Geographical identifiers and UDRP requirements: a landmark case (D2019-1758, visitqatar.com) European Union: launch of domain names in Greek (.eu and .eю) United States: contributory trademark infringement. The Luxottica case Press Cambodia 1. Cambodian police have destroyed several thousand bottles of fake Penfold and other alcoholic beverages. thenewdaily.com.au,…

201912.04

France : Ministerial Ordinance to Strengthen Trademark Protection

Editor’s note: below is a non official translation of the report published by the French government. The French Minister of Economy and Finance has issued an ordinance on trademarks. This ordinance, taken on the basis of Article 201 of Law No 2019-486 of 22 May 2019 on the growth and transformation of companies, transposes into…

201911.22

European Union: launch of domain names in Greek (.eu and .eю)

In 2016, Eurid, the registry of the European ccTLDs, created the .eю (.eu in Cyrillic), recalling that the Old Continent takes its name from the Princess Europe, a character of Greek mythology. Since November 14, 2019, citizens of the European Union can register domain names in Cyrillic, under the two extensions of the European Union: .eu…

201911.21

United States: contributory trademark infringement. The Luxottica case

Luxottica Group, S.p.A. and its subsidiary Oakley, Inc. (hereinafter, “Luxottica”) manufacture and sell luxury eyewear (Ray-Ban and Oakley among other brands). Luxottica sued Mini Mall Airport LLC (in College Park, Georgia) and its owners and managers for infringement of its Ray-Ban and Oakley trademarks. Previously, police operations had found that many tenants offered counterfeit eyewear…

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!

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…