202101.21

UDRP on Gameroom.com: Facebook keeps its domain name

My Gameroom LLC initiated a UDRP procedure against Facebook for gameroom.com, registered in 2016, based on the rights it holds on “MY GAMEROOM” U.S. trademarks, registered since 2018, but used since 2016. The transfer request was rejected for several reasons. First, the panelist considered that “Complainant provide[d] no evidence of significant use of its mark…

202101.14

France: disclosure of a confidential fashion collection by an employee

In 2010, Petit Bateau (a French brand of clothing for children) hired Ms. A as an export project manager. The employment contract contained a confidentiality clause. By letter of May 15, 2014, Ms. A was dismissed for serious misconduct, particularly for having breached her confidentiality obligation by posting, on April 22, 2014, on her Facebook…

202101.05

UDRP on spase.com: act II (two decisions in three months)

On July 3, 2020, Mr. G., claiming to be the owner of an unregistered trademark called “SPASE” since 2019, initiated a UDRP procedure before the Arbitration and Mediation Center of the World Intellectual Property Organization (wipo.int) against the holder of the domain name <spase.com>, created in 2005 and continuously used by Mrs. Jello, LLC. The…

202101.04

DNSSEC: all gTLDs are secure

On December 23, 2020, ICANN announced that the DNSSEC protocol was now deployed and operational in all generic top-level domains (i.e. 1,195 gTLDs). ICANN may, in consultation with ccTLD registries, focus on national geographic extensions that are not yet secure. Source: Domain Name System Security Extensions Now Deployed in all Generic Top-Level Domains, icann.org, 2020-12-23…

202012.30

UDRP on mym.fan : a rare example of transfer concerning an acronym

It is rare for a UDRP complaint about a domain name identical to an acronym trademark to be successful (see, eg: “Trademarks and domain names: it’s hard to be an acronym trademark!”, iptwins.com, 2019- 04-24). In this regard, the UDRP CAC 103302 decision stands out (CAC UDRP case No. 103302, Air Medias v. Jurgen Neeme,…

202012.29

UDRP: hydroquébec.com

Hydro-Québec, the public company responsible for electricity in Quebec, obtained the transfer of the domain name <xn--hydroqubec-h7a.com> (hydroquébec.com) (NAF, FA2011001921549, Hydro-Québec v. Tomasz Kurlenko, December 23, 2020). The claimant had no difficulty in proving that this was a case of cybersquatting. The “hydroquebec.com” case recalls the importance that there may be in registering and using…

202012.21

The starting point of the limitation period in the cnDRP: rejecting the creation date of the domain name in favor of the date of the occurrence of a new fact

Unlike other regulations for the out-of-court resolution of domain name disputes, Article 2 of the cnDRP (China) sets a time limit to start a cnDRP procedure. However, imposing such a deadline, based exclusively on the date of registration of the domain name, is not appropriate: . “197. The WIPO Interim Report recommended that a time…

202012.18

France and the European Union: Blanchet and Bournazel report on the evaluation of the fight against counterfeiting

A little over a year after the report of the French Court of Audit on counterfeiting (iptwins.com, 2020-03-10), Christophe Blanchet and Pierre-Yves Bournazel (delegates at the French National Assembly) delivered a report of prime importance on the evaluation of the fight against counterfeiting (Christophe Blanchet et Pierre-Yves Bournazel, Rapport d’information sur l’évaluation de la lutte contre…

202012.03

Article 2 of the cnDRP: the reaction time of brand owners

The rules for the out-of-court resolution of top-level domain names in the People’s Republic of China (.cn and. 中国) are unique. This mode of dispute resolution, created by the China Internet Network Information Center (CNNIC), is mainly governed by two legal instruments: the national method of resolving disputes relating to top-level domain names (China ccTLD…

202012.02

GIView: the EUIPO database for geographical indications

The European Union Office for Intellectual Property (EUIPO) launched a database of geographical indications recognized and protected in the European Union: GIview. GIview makes it possible to query the status of a geographical indication abroad under bilateral treaties and conventions. Here are some examples: Fontina (IT) is registered in Japan through the transliteration “フ ォ…

202011.20

Advertising keywords: beyond distinctive signs

Under French law, the unauthorized sale of show tickets constitutes a criminal offense punishable by a fine of € 15,000; a penalty increased to a fine of € 30,000 in the event of a repeat offense (art. 313-6-2 of the Criminal Code). The main objective of this provision is “to fight against the organization of…

202011.20

geoTLD .ZUERICH: sunrise period postponed to May 3, 2021

The authorities of the canton of Zuerich have published new dates for the launch of .ZUERICH. The sunrise period, reserved for owners of trademarks registered with the Trademark Clearinghouse, will run from May 3, 2021 to July 6, 2021. General availability is set for July 27, 2021.

202011.04

Containment in France: the IP Twins team remains available

Due to the Covid-19 epidemic’s resurgence, the French government has decided to resort to confinement of the French population. To best protect our employees and our customers’ health, the IP Twins team will work remotely from this day until further notice. The switchboard will be provided, and you will be able to reach your account…

202010.30

spase.com: a UDRP compendium

The domain name? Spase.com, created in 2005 and continuously used by a US national to generate revenue through a parking page. The complainant? An entrepreneur who founded Spase, Inc. (United States) in 2019. The latter initiated a UDRP complaint against Mrs. Jello, holder of spase.com. The parties’ arguments led the three-member panel to decide several…

202010.20

The deployment of the DNSSEC protocol

Originally, the DNS ignored insidious security issues that might arise. This results in vulnerabilities, intrinsic to the DNS, which favor attacks of different types. It is legitimate to fear, in particular, the following types of attacks: “Man in the Middle”; cache poisoning; or Distributed Denial of Service (DDoS). As a result, domain name holders may…

202010.16

boycottrolandgarros.com: the need to set up daily alerts as soon as a controversy emerges

The COVID-19 pandemic is forcing event organizers to be extra vigilant concerning domain names, among other things. As agendas are turned upside down, events are easy prey for cybersquatters. For example, on March 24, 2020, the International Olympic Committee announced the Tokyo Olympic Games’ postponement, at the latest, to summer 2021 (Olympic.org, 2020-03-24). Given that…

202010.12

Startups: Monitor the use of your brands on the Internet!

Cybersquatting often refers to the age of the target brand. Classically, a brand derived its notoriety partly from its long history. This assertion must be mitigated. This is not always the case, and it is less and less the case. Abusive registrations of domain names reproducing or imitating trademarks in the information technology sector occur…

202009.28

Orizon.com: an atypical UDRP

Saudi Arabian Oil (E. A. U.) wanted to obtain the transfer of the domain name orizon.com, identical to its “ORIZON” brand. However, the complainant faced a series of obstacles (OMPI, D2020-2035, Saudi Arabian Oil Co. v. Orizon Multimedia Inc., September 15, 2020). Firstly, the domain name was registered in 1997 by Orizon Multimedia Inc. (USA), while…

202009.18

.CONTACT: an imminent sunrise period not to be missed

Donuts is launching the .CONTACT on September 29, 2020. The sunrise period will run until November 28, 2020. This new gTLD is essential for two reasons. First, from a practical point of view, the .CONTACT can be of some use for companies’ communication, particularly for those that deploy on network-type models (among others: licensing, selective…

202009.14

UDRP: the offer of products “compatible” with those of the claimant

JUUL Labs started UDRP proceedings to stop acts of unfair competition and misleading advertisement and, at the same time, obtain the transfer of the juulcompatible.com domain name. Circumstances irresistibly invite to refer to the Oki Data decision. According to this case law established as early as 2001 (WIPO, D2001-0903, Oki Data Americas, Inc. v. ASD, Inc., November…

202009.07

A UDRP case involving a .CEO domain

The statistics of the Arbitration and Mediation Center of the World Intellectual Property Organization (CAM-WIPO) for the year 2019 revealed that the share of new gTLDs in domain name cases was around 10% (ompi.int, April 8, 2020). These cases mainly concerned the following gTLDs: .online (64), .xyz (49), .win (48), .club (34), .top (31), .app (31), .site  (31), .website (.24), .store (.22). Given the multiplicity of new gTLDs, this percentage seems relatively…

202008.24

The perpetuation of trademark infringement by third parties: judgment of the CJEU

The German law firm MBK Rechtsanwälte owns an eponymous trademark, registered for legal services. mk advokaten is also a German law firm that initially operated under the names “mbk rechtsanwälte” (for Germany) and “mbk advokaten” (for the Netherlands). “Initially” because following an infringement action brought by the first, the second was ordered to change its…

202008.13

European Union: a study on evaluation of practices for combating speculative and abusive domain name registrations

In May 2020, a study entitled “evaluation of practices for combating speculative and abusive domain name registrations,” conducted by Fasano Paulovics, was published by the European Commission (European Commission, “Study on evaluation of practices for combating speculative and abusive domain name registrations”, May 2020: ISBN 978-92-76-20634-7). This is a richly documented and ambitious study that…

202008.04

Baby Shark sharpens its teeth against Chinese counterfeiters

“Baby Shark” is a worldwide hit with toddlers and young children. Smart Study Co., Ltd. (South Korea) initiated legal proceedings in New York against more than a hundred defendants, individuals, and companies based in China, for infringement of the BABY SHARK trademark and copyright. The dazzling worldwide success of “Baby Shark” has generated a wave…

202007.30

UDRP on catalyzer.com: from the utopia of complaint to the reality of the decision

The US company Catalyzer, Inc. has initiated UDRP proceedings against a Russian national who owns the domain name catalyzer.com. Catalyzer, Inc. unsurprisingly lost the case (NAF, FA2006001900506, Catalyzer, Inc v. Alexander Bitkin, July 27, 2020): the request presented two insurmountable deficiencies. The first concerns the generic nature of the word “catalyzer.” In this case, the…

202007.23

The appeal against a UDRP decision: the BAMC?

Emily Rose Trust had to transfer the domain name uglyhousesri.com following UDRP proceedings (NAF, FA2003001889990, HomeVestors of America, Inc. v. Emily Rose / NCRS, May 20, 2020). As of May 29, 2020, this company made an “appeal” to the Board Accountability Mechanisms Committee (BAMC) of the Internet Corporation for Assigned Names and Numbers (ICANN) with…

202007.17

Amazon.com: more transparency, less counterfeits

Amazon has announced that as of September 1, 2020, the seller’s business name and address will have to appear on the seller’s page while operating on Amazon.com, as is the case with many jurisdictions, including the European Union. The sellers may also add any other information that they deem relevant, with the exception of the…

202007.09

New gTLDs: first revocation of a dotBRAND for breach of the registry agreement

On June 27, 2020, ICANN (Internet Corporation for Assigned Names and Numbers) revoked the .AIGO brandTLD. The Chinese company Aigo Digital Technology Co, Ltd, manufacturer of electronic products, had obtained the acquisition of this top-level domain in 2016, probably intending to conquer the non-Chinese speaking markets. Many Chinese companies have acquired a brandTLD, either exclusively…

202007.03

The protection of wine geographical indications: legislative efforts since Pliny

On February 26, 2020, the Geneva Act of the Lisbon Agreement on Appellations of Origin and Geographical Indications entered into force (wipo.int). Recently, a Shanghai court condemned an infringer to a suspended prison sentence and a fine for counterfeiting Bordeaux wines. This decision follows an investigation and the seizure, in March 2019, of nearly 10,000…

202006.26

Some tips for a domain name portfolio management strategy in pandemic times

Analysis of the UDRP decisions made following procedures started during the COVID-19 pandemic reminds us of the impossibility of predicting all cybersquatting cases. These decisions also reveal certain flaws in the management of domain name portfolios. During the H1N1 flu pandemic in 2009, Hoffmann-La Roche faced a series of cybersquatting cases targeting the “Tamiflu” trademark:…

202006.23

Amazon and Valentino v. Kaitlyn Pan: contractual breach and counterfeiting

Amazon and Valentino join forces to sue Kaitlyn Pan and Hao Pan before a Washington State court for infringement of intellectual property rights (Amazon and Valentino v. Kaitlyn Pan Group and Hao Pan, box 2: 20- cv-00934 (Western District Washington)). It is not the first time that Amazon joins an intellectual property rights holder in…

202006.17

Google Search: finally, a take-down procedure for removing non-commercial links!

Google completes its procedures for a more reliable Internet. Traditionally, brand owners have had the chance to request the removal of content such as paid advertising (Google Adwords) or downloadable applications from Google Play. However, there was no procedure for removing an unsponsored link on Google Search. Google now extends its engagement in the fight against the…

202006.10

June 10, 2020: 22nd World Anti-Counterfeiting Day

June 10, 2020, is the 22nd World Anti-Counterfeiting Day. Created on the initiative of the members of the Global Anti-Counterfeiting Network (GACN), it aims to raise awareness among a broad audience of the reality and consequences of counterfeiting. Promoted by globalization, the progression of the Internet penetration rate and many other factors, the share that…

202006.10

New domain name dispute resolution policies: .acDRP, .ioDRP and .shDRP

The World Intellectual Property Organization Arbitration and Mediation Center (WIPO-AMC) widens the range of extrajudicial procedures it administers to resolve disputes relating to ccTLDs domain names registered. Internet Computer Bureau (ICB), the registry of .AC (Ascension Island), .SH (Saint Helena) and .IO (British Indian Ocean Territory) has designated WIPO-AMC to administer the .AC, .IO and…

202006.01

The .PLACE is open!

The .PLACE sunrise period took place in 2014. The registration conditions were then ordinary. However, in 2018, Donuts (the registry) decided to apply restrictions to this TLD. These restrictions are now lifted, as of June 1, 2020, so that everyone is eligible to register .PLACE domain names.

202006.01

EUIPO and EURid: getting trademarks and domain names at the same time

The European Union Intellectual Property Office (EUIPO) and EURid, the registry of European top-level domains, announce plans to intensify their collaboration with the view of supporting small and medium enterprises in obtaining European trademarks and European domain names. The goal, always desired by IP Twins, aims to facilitate the concomitant obtaining of European trademarks and…

202006.01

UDRP: the improper and unjustified transfer of the domain name home-goods.shop

The UDRP decision FA 1893706, rendered on May 22, 2020, under the aegis of the National Arbitration Forum, deserves careful reading (NAF, FA 1893706, HomeGoods, Inc. v. Jiahongnetwork / jiahongnetwork jiahongnetwork, May 22, 2020, transfer). The dispute was between the owner of the HOMEGOODS trademark (an American company) and the owner of the domain name home-goods.shop…

202005.11

China: acquisition of domain name, limitation period and admissibility of the complaint under the China dispute resolution procedure

Extrajudicial procedures for the settlement of disputes relating to Chinese domain names are governed by the China National Domain Name Dispute Resolution Policy (CNNIC Policy) and Rules (CNNIC Rules). Compared to the Uniform Domain Name Dispute Resolution Policy (UDRP), this legal corpus contains special features that, in particular circumstances, can make the case relatively complicated. The HKIAC…

202005.01

coronaprevention.org seized by the American authorities

Fraudsters continue to speculate on pandemics, panic, and scarcity (iptwins.com, 2020-03-19), while brand owners (googlecoronavirus.com, iptwins.com, 2020-04-06) and authorities continue their efforts in the fight against fraud of all kinds (iptwins.com, 2020-03-30). On April 24, 2020, the United States government obtained the seizure of the domain name coronaprevention.org: “The seizure warrant alleges that the owner…