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…

201811.20

Fighting against counterfeit medicines by suspending and blocking domain names

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…

201811.16

2018 Special 301 Out-of-Cycle Review of Notorious Markets: Chanel’s Choices

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…

201811.15

2018 Special 301 Out-of-Cycle Review of Notorious Markets: Maus Frères targets Facebook, iOffer, and Mercadolibre

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…

201811.13

ICANN Reaffirms the Temporary Specification for gTLD Registration Data

On May 17, 2018, the ICANN Board of Directors adopted the Temporary Specification for gTLD Registration Data. The purpose of these contractual provisions is to enable ICANN-accredited registrars to continue to comply with ICANN’s contractual framework in the light of Regulation (EU) 2016/679 of the European Parliament and of the Council of 27 April 2016…

201811.06

Pangea XI: 859 arrests

Interpol has once again coordinated a Pangea operation (Pangea XI) to destabilize the networks involved in counterfeit pharmaceutical and medical products. Interpol closely collaborated with institutions and companies deeply involved, willingly or not, in the fight against counterfeiting: the World Customs Organization (WCO); the Permanent Forum of International Pharmaceutical Crime (PFIPC); the Heads of Medicines…

201811.06

Press Review on Counterfeiting (October 2018)

Belgium As part of the Pangea XI operation, the Belgian customs, in collaboration with the Federal Agency for Medicines and Health Products (FAMHP), controlled 14,464 packages, of which 622 contained medicines or health products. Of these, 141 were seized. They included 28,689 counterfeit products (rtbf.be, 23 oct. 2018). In Brussels, in the Agora gallery, an…

201811.02

Remembrance Day: authorities combat fake poppies

Every year, the Royal British Legion calls to remember and support its action by organizing a fundraising campaign the symbol of which is a poppy brooch. More than ever, the celebrations of the year 2018, marking the centenary of 11 November 2018, should be memorable. The poppy is the trademark of the Royal British Legion. As…

201810.27

PAP (real estate ads) v. PapAuto (car ads): no risk of confusion, and the reputation of the “PAP” is not demonstrated

Éditions Neressis is a French company that runs a real estate website called “PAP, Particulier à Particulier”. This company owns the French trademark No. 1518035 “P.A.P. Particulier à Particulier” (classes 16, 35 and 41), the European Union trademark No. 006701973 “PAP” (classes 16, 35, 38, 41), and the domain name pap.fr. This website pap.fr is…

201810.22

Louis Vuitton Combats Online Counterfeiting Before a Florida Court

Louis Vuitton is suing 23 natural and legal persons in Florida for various infringements of its trademarks (Case 0: 18-cv-62354-CMA). Not less than 120 domain names and websites are concerned. Some domain names reproduce Louis Vuitton trademarks (eg louisvuittonbag.site, uslouisvuitton.co, prezzi-lvborse.org), while others include a term indicating the likely presence of counterfeits (eg: aaaimitationbags.com, fashionfakeseason.com,…

201810.19

2018 Special 301 Out-of-Cycle Review of Notorious Markets: the AAFA Nominates Three Amazons Platforms

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…

201810.10

The Birth of AliExpress Russia

For manufacturers, traders and distributors, the birth of a major e-commerce player is perceived either as a windfall or as a threat. This depends, among other things, on the risk that this new player may pose to intellectual property rights owners. The birth of AliExpress Russia inevitably provokes feelings of enthusiasm and dread. Founded in…

201810.09

EU Customs Report 2017 on Counterfeiting: Highlights

This report is based on the EU Customs 2017 results (Report on the EU customs enforcement of intellectual property rights: Taxation and Customs Union. Results at the EU border, 2017). For the most part, the counterfeit goods seized continue to come from China, including Hong Kong. However, it appears that in some countries counterfeiters have…

201810.08

Counterfeit and “Parasitism”: the All Blacks Tackled French Companies

New Zealand Rugby Union (NZRU) is the institution responsible for managing Rugby in New Zealand. It “ensures the operation and development of the national rugby team known as ‘All Blacks’ and conducts an active merchandising policy around the world to obtain the financial revenues necessary for the development of its activity“. It owns a semi-figurative…

201810.01

Uganda: the Role of Financial Institutions in Fighting Counterfeiting

In Kampala, bankers and anti-counterfeiting specialists have come together to find effective solutions against this scourge that literally floods the country with goods of mediocre and dangerous quality. According to the UNBS (Uganda National Bureau of Standards), at least 50% of all goods on the Ugandan market are false. Financial institutions in Uganda have been…

201810.01

Press Review on Counterfeiting (September 2018)

Canada, Ontario A several-month investigation led Canadian authorities in June 2018 to make large seizure at the famous Pacific Mall in Markham, north of Toronto. Representative of the Canadian authorities traveled to New York to meet with trademarks owners, including Adidas, Chanel, and Cartier. After analysis, it was confirmed that the goods seized were counterfeit….

201809.28

.PAGE: Sunrise Period Ends on October 1, 2018

The sunrise period for .PAGE domain names will end on October 1st, 2018. This new gTLD is intended for a wide audience. The offer generated by the new gTLDs market facilitates access to domain names so that cybersquatting risks are greater. The Internet Corporation for Assigned Names and Numbers (ICANN) requires registries to set up sunrise…

201809.27

Cambridge.org v. Carnbridge.org: a UDRP Case on Typosquatting and Identity Theft

The University of Cambridge started a UDRP proceeding under the auspices of the World Intellectual Property Organization’s Arbitration and Mediation Center to obtain the transfer of the unsettling domain name carnbridge.org. The transfer of the domain name was ordered (WIPO, D2018-1542, The Chancellor, Masters and Scholars of the University of Cambridge v. Sunny Legend, September…

201809.25

Copyright as a Means to Fight Against Counterfeiting

On February 24, 2014, French customs visited the offices of a company called “Parisac”. The customs seized nearly 4,000 counterfeit Chanel and Céline bags imported from China. Parisac and its manager, Mr. X., were prosecuted in the Criminal Court for counterfeiting and importing counterfeit goods. On May 4, 2015, the Criminal Court found them guilty….

201809.16

€510,000 in Damages for Counterfeits of Rims and Unfair competition

Mr. R. operates the websites rsimport.com and eurojante.com. The BMW companies have been informed that these tunning websites have a large number of BMW and MINI branded rims. Therefore, BMW managed to obtain the right to conduct a so-called saisie-contrefaçon conducted in the premises of Mr. R. Under French law, saisie-contrefaçon relates to Article 7(1) of the…

201809.14

Juul Labs Gets an Injunction Against Thirty Chinese Counterfeiters

“The scale of counterfeit Juul products is alarming,” said Kevin Burns, managing director of Juul Labs. (Juul) (Juul.com, September 11, 2018). The dazzling success of this young e-cigarette maker founded in 2017 comes with a big wave of counterfeits. To counter this, Juul collected a number of pieces of evidence and produced them before the…

201809.13

What to Do With Domain Names Such as starbucksnestle.com and starbucks-nestle.com?

The announcement of a commercial partnership between Nestlé (nestle.com, May 7, 2018) and Starbucks (starbucks.com, August 28, 2018) led to cybersquatting cases. Many domain names combining the “nestle” and “starbucks” trademarks were registered. DRP proceedings were initiated, including the D2018-1183 procedure undertaken by the Nestlé Products Corporation against a US citizen who had registered two…

201809.04

On Your Marks, .SPORT Kicks Off!

The new gTLD .SPORT targets federations, sports organizations, clubs, teams, their athletes, their sponsors, but also sports brands and the media. SPORTt has its rules, so the .SPORT. Eligibility rules apply. The choice of domain names is not free and, for now, the time of registration either. First Rule: Eligibility Sport is for everyone, not the…

201808.31

Cybersquatting: Back to Basics

Can a company (company A) register a domain name (say companyb.com) that is identical to the trademark of its main competitor (company B), and redirects it to its own website (companya.com)? Surprisingly, it appears that the issue still deserves to be raised. Two Canadian publishers fought in a dispute resolution process concerning a .CA domain…

201808.27

Press Review on Counterfeiting (August 2018)

Dubai In the first half of 2018, Dubai Department of Economic Development (DED) closed 4,879 social media accounts and 30 websites involved in the sale of counterfeit goods. This initiative is part of the efforts of the Dubai authorities to participate in the protection of trademarks (Golfnews.com, 5 August 2018). Borneo Ministry of Domestic Trade…

201808.14

Pinduoduo: Counterfeiting Hurts Investment

While it had just made a thundering entry to Nasdaq, the Chinese marketplace Pinduoduo, entered the turmoil. Pinduoduo is under scrutiny after China’s State Administration for Market Regulation (CSAMR) announced that it was investigating claims according to which Pinduoduo would sell counterfeit goods. Pinduoduo is accused of being lenient in the fight against counterfeiting. The CSAMR’s announcement…

201808.14

China: the 2018 Net Sword Action

On July 16, the National Copyright Administration and the National Network Information Office, the Ministry of Industry and Information Technology, and the Ministry of Public Security jointly held the “Jianwang 2018” special action briefing in Beijing, announcing the launch of the “2018 Net Sword Action” (剑网行动). The 2018 campaign turns the spotlight on copyright infringement…

201808.07

India: Amazon Obliged to Bring Counterfeiters to Justice

In India, Beverly Hills Polo Club brand (BHPC) had received information on widespread sale of counterfeit products on amazon.in, including apparel products, accessories, fragrance products, watches, or belts. Now BHPC does not sell its products on online marketplaces, except fragrance/perfumery products. BHPC had therefore asked Amazon to delist the counterfeit URLs and provide BHPC with…

201808.03

Frivolous UDRP Complaints: Time to Claim Damages

Innovation HQ, Inc. has owned the domain weeds.com for several years. At the end of 2017, the domain name led to a single page with links made up of generic terms related to horticulture and gardening. This page also announced that the domain name was for sale. Weeds, Inc. owns trademarks that include the word…

201808.02

Domain Name Hijacking: Two Chinese Individuals Before an American Court

A Chinese citizen, Mr. C., is suing another, Mr. L., before the U. S. District Court for the Eastern District of Virginia, in the United States, on the ground of the Anticybersquatting Consumer Protection Act (ACPA). This in rem proceeding concerns the following domain names: 789365.com, 402013.com, 402014.com, 402015.com and vip999365.com (Xiaomei Chen v. Lin Bing Jun,…

201807.13

Greek ccTLD .ελ: Sunrise Period Open

The Greek ccTLD .ελ is open! As a first time, until October 10, 2018, it is only possible to register a domain name under this new .ελ ccTLD if the domain name in question is not already registered under ccTLD .gr. In other words, domain name owners under the first and second level of .gr…

201807.10

French Government v. France.com: the European Battlefield

The judicial battle between the French government and France.com, Inc., which occurs in France and the United States, also takes place before the European Union courts. France.com, Inc. had filed an application for European trademark. This application referred to a semi-figurative sign composed of i) the name “France.com” and, ii) a pentagon in the colors…

201807.09

.realestate: Let’s Build Together!

The sunrise period of the top level domain dedicated to the real estate business is approaching. Registrations will run from July 28 to August 27, 2018. IP Twins is an accredited registrar with extensive experience and strong expertise in sunrise period procedures. We can assist you in the preparation of your .realestate domain name registration…

201806.28

Harley-Davidson wins 19.2 Million in Statutory Damages Against SunFrog

SunFrog Corporation has been ordered, for trademark infringement, to pay Harley Davidson nearly $ 20 million (HD USA, LLC and Harley Davidson Motor Company Group, LLC, v. SunFrog, LLC, No. 17-CV -711-JPS, US District Court Eastern District of Wisconsin). SunFrog is a marketplace that provides its users with creative tools to produce graphics to be…

201806.25

United States: Prison for Selling Counterfeit Nike Shoes

In Oregon, USA, a man was sentenced to four months in prison followed by three years supervised release for counterfeiting and money laundering. According to the US Department of Justice (DoJ, April 4, 2018), counterfeit Nike brand shoes were offered for sale on Instagram, eBay, and Shopify. The evidence shows that in two years the…