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…

202004.30

Romag Fasteners, Inc. v. Fossil Group, Inc.: towards an obligation of vigilance of the same nature as the principles governing corporate social responsibility?

Romag Fasteners produces magnetic snaps. The company had granted a license to Fossil to incorporate the snaps in its handbags. A few years after the license was signed, Romag discovered that Fossil – or, more precisely, its manufacturer in China – was using counterfeit snaps. Romag sued Fossil. A jury ordered Fossil to pay Romag…

202004.24

.ORG: California Attorney General enters debate

. The .ORG saga had a “shock episode” on April 15, 2020, when the Attorney General of the State of California entered the debate by sending a letter to the Internet Corporation for Assigned Names and Numbers). Attorney General Xavier Becerra says he is very concerned. As a reminder, in April 2019, ICANN had proposed…

202004.21

After the GDPR, the CCPA: same impact on Whois records?

In line with the General Data Protection Regulation (GDPR), which entered into force on May 25, 2018, the California Consumer Privacy Act (CCPA) came into force on January 1, 2020. Both include similar provisions, so much so that the CCPA could have the effect of redacting a large number of Whois files, which remained intact…

202004.15

UDRP: the CIIDRC is operational and there are already great decisions!

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, CIIDRC.org), a branch of British Columbia International Commercial Arbitration Center (bcicac.com), as a domain name dispute resolution institution (icann.org, 2019-03-19). It is worth reviving that the BCICAC has…

202004.13

WIPO domain name proceedings statistics for 2019: 26% of defendants are American

As every year, the World Intellectual Property Organization delivered statistics for the past year. International deposits of patents, brands, designs and models, but also the number of procedures handled by the Arbitration and Mediation Center, including those relating to domain names (for last year’s statistics, see iptwins.com,2019-03-15). In 2019, the number of DRP-type procedures continued…

202004.09

Coty v. Amazon: the CJEU’s missed opportunity

On April 2, 2020, the Court of Justice of the European Union (CJEU) rendered one of the most expected IP-related decisions of the year (CJEU, Coty v. Amazon, April 2, 2020, C‑567/18). By not following the recommendations of Advocate General Manuel Campos Sánchez-Bordona (CJEU, Coty v. Amazon, C ‑ 567/18, concl. M.C. Sánchez-Bordona, November 28,…

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…