201902.06

cnDRP: Blablacar.com.cn transferred while Blablacar.cn rejected, why?

With 800 million Internet users, China is the largest market. It is imperative to file its trademarks in China and register domain names aimed at the Chinese market at the same time as the brand is created. Trademarks and domain names must be matched as twins both in the country of origin and in foreign…

201902.05

EUIPO to finally tackle cyberquatting issues

Back in 2016, IP Twins released a communication on the increase of cybersquatting of trademark applications before the European Intellectual Property Office (EUIPO). Indeed, EUIPO currently publishes trademark applications as soon as they are filed. Cybersquatters only have to scan the EUIPO website for new application and automatically register the corresponding .COM domains in seconds,…

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)…

201901.14

.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…

201812.20

.be adopt a new procedure for domain name deactivation

Since the 1st of December, a new procedure has been implemented in partnership by the Belgian Registry DNS Belgium and the Federal Public Service Economy (FPS Economy). This procedure allows FPS Economy to seek the deactivation of a .be domain name used in relation to fraudulent websites or Phishing activities. According to the procedure set…

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,…

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…

201811.20

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…

201811.13

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

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…

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…

201810.23

Skyscanner loses UDRP complaint in surprising decision

On 5th October 2018, the WIPO Arbitration and Mediation Centre published a decision related to the domain name fly-scanner.com and ordered that the domain name remains with the respondent (D2018-1782). This decision may appear as surprising at first sight given Skyscanner’s huge market share and 60 million active users. Let’s try and understand the decision. The Complainant…

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,…

201810.11

TMCH discounts until 31st December!

Now is a good time to register or renew your trademark record at the Trademark Clearinghouse (TMCH) for several years! The TMCH is now offering important discounts on multiannual registration or renewal. TMCH fees for a 3-years subscription will fall from $405 to $285, and from $675 to $475 for a 5-years registration or renewal,…

201810.11

Beijing launches Internet-related online court

Following the path open by the city of Hangzhou in 2017, Beijing has recently opened its first online court dedicated specifically to handle Internet-related matters. The new civil court will have jurisdiction over matters previously decided by an ordinary court of first instance: online shopping, personal data protection, copyrights, domains and service contracts for example….

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

.CHARITY Needs Your Help!

The new generic top-level domain (gTLD) .CHARITY was launched last 9 August 2018, and is now available to the general public. There are no registration requirements for .CHARITY domains, which may, of course, be used in relation to individuals and organizations engaged in philanthropy, charitable giving, cause-related fundraising, and other philanthropic initiatives to concretize online…

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…

201808.10

The GDPR Facilitates Large-Scale Phishing

Phishing is the fraudulent attempt to obtain sensitive information, often for malicious reasons, by disguising as a trustworthy entity in an electronic communication. This practice uses domains identical or very similar to well-known brands: banks, insurance companies or airline companies are very often victims of these attacks. A number of elements help to create large-scale…

201808.09

Is Your Business Related to Luxury? Then Consider Registering Your .LUXE Domains

Registry operator Minds and Machine is launching the new gTLD .LUXE on 9 August. This extension targeted the luxury market, just as .luxury, but the Registry switched strategy and now markets this extension as a means of exchanging crypto-currencies: .luxe Lets yoU eXchange Easily. There is no registration requirement for .luxe domains, which may, of…

201808.09

Thieves in the Temple? Prince Estate Files Cybersquatting Case vs. Prince.com

The latest in a string of suits filed by the estate of the recording artist Prince (Prince Estate), a New Jersey-based domain name trader, Domain Capital, is being accused of cybersquatting by the Prince Estate for registering the domain name <prince.com> (Paisley Park Enterprises, Inc. and Comerica Bank & Trust, NA as Personal Representative of…

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,…

201808.01

Brexit: Among the ccTLDs, the .EU is not the Only Issue

It is now widely known that the United Kingdom will leave the European Union on 29 March 2019. This will impact all fields of IP law, and domain names are also concerned. The European Commission recently released a communication in relation to .eu domain names. The communication states that: “undertakings and organisations that are established in…

201807.24

New TLDs launch update

Several gTLDs will be launched in the upcoming weeks: .COM in Hebrew: קום. Verisign, which manages in particular the .COM and .NET top-level domains, announced the launch of .COM in Hebrew characters. The launch calendar is as follows: 30/07 – 04/09: Sunrise period for TMCH records holders only 05/09 – 01/10: Priority registrations for the…

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…

201806.25

The Financial Evaluation of a Domain Name in a UDRP Proceeding

A Taiwanese company registered the disputed domain name senec.com in 2002. A German company, the owner of European trademarks “SENEC”, initiated a UDRP procedure. On the day of receipt of the UDRP complaint by the Arbitration and Mediation Center of the World Intellectual Property Organization (AMC-WIPO), the domain name gave access to a parking page…

201806.06

UDRP: the Boomerang Effect of the Response

The Uniform Dispute Resolution Policy (UDRP) procedure to obtain the transfer of a domain name is a straightforward proceeding, within which the evidentiary requirement is rather low. To obtain a favorable decision, the Complainant must satisfy three conditions: the domain name must be identical or similar to a trademark to which the Complainant has rights;…

201805.15

France.com: Caution and Patience

The media has reported what is now known as France.com. Just as many are those who echoed the arguments of one of the protagonists. However, the case has not yet been decided as it is much more complex than it seems. The decision must be concluded with caution. The story of the France.com domain name…

201805.15

Brexit: Consequences on UK’s Eligibility for .EU Domains

The European Commission has announced the legal consequences of Brexit on the UK’s eligibility for the .EU Top Level Domains after the withdrawal date which is set for. 30 March 2019 (European Commission, Withdrawal of the United Kingdom and E.U. Rules on .EU Domain Names, 28 March 2018). The Commission recalled that, “Subject to any…

201805.15

Cybersquatting: an Extortion Attempt for 95,000 GBP!

The Clydesdale and Yorkshire Banking Group’s Forex branch had just filed its trademark application with the U.K. Intellectual Property Office for its CYBFX brand only later find out that the domain name <cybfx.co.uk> had already been registered by a cybersquatter. Upon further investigation, the bank discovered that the domain name was registered by an Eric…

201805.15

DreamWorks Animation Wins a Cybersquatting Case Against a Trademark Troll

In the field of intellectual property, a troll is an individual or a company that produces nothing but shows enough audacity to initiate proceedings to have an infringement of its alleged rights recognized. In 2014, the Troll producer won a UDRP case concerning two domain names: orientaldreamworks.com and shanghaidreamworks.com (D2014-0171, Dreamworks Animation LLC v. Hongyun…

201804.22

GDPR, Whois and the United States DoC

In a month, on 25 May 2018, the much talked about General Data Protection Regulation GDPR will come into force. Much has already been said and written about the consequences of compliance with the new regulation on Whois data. The closer we get to said implementation date of 25 May 2018, the more ICANN and its IPC – Intellectual Property Constituency of the Generic Names…

201804.17

Launch of two new gTLDs .购物 and .ICU

购物 / xn--g2xx48c (.shopping in Chinese) The register Minds and Machines, has published the calendar for the launch of the new extension .购物 on the 20th of avril. This new gTLD means ‘shopping’ in Chinese. The launch will be the following: Sunrise (for TMCH) opens 20 April and closes 19 June 2018. General availability opens 21 June 2018. All…

201804.13

.GE (Georgia) regulations eventually made easy

As from 15 April 2018 new regulations for registration, transfer and handling of disputes of .GE domain names will apply. Change regarding local presence: Until now in order to register a .GE domain it was required to have a local physical presence in Georgia. Since this requirement will now be removed, any registrant outside Georgia…