201905.21

Monetizing dormant domain names by a license agreement

Of the 348.7 million domain names registered (Verisign.com, The Domain Name Industry Brief, Vol 16, Issue 1, March 2019), many of them are dormant: either they are not activated or, if they are, they only designate a parking page. There is another way to monetize a domain name: the license agreement. Admittedly, this solution can…

201905.12

Thesun.com: “the sun shines for everyone”

Can trademark owners such as “The Sun” prohibit third parties from registering domain names that are identical to those trademarks? The issue raised is that of weakly distinctive trademarks because of the genericity of the word or words of which they are composed. Owners of such trademarks are inexorably exposed to stiff competition in the…

201905.10

2018 Out-of-Cycle Review of Notorious Markets: domain names

The role of registrars Each year, the USTR collects complaints from intellectual property rights holders. For the year 2018, the Alliance for Safe Online Pharmacies, ASOP Global, shared its experience in a letter to the USTR on October 5, 2018. In this contribution, ASOP Global intended to address the problem of illegal drugs at the…

201904.24

HKIRC launches its registry lock

Hong Kong Internet Registration Corporation Limited (HKIRC) launches a new Registry lock service for the extensions it manages: .hk, .com.hk, .公司.hk, .公司.香港 et .香港. As a reminder, the registry lock allows blocking any transfer, WHOIS contact update or authoritative nameservers modification at a registry level. Actions of locking and unlocking domains obey to a specific…

201904.23

A new cityTLD is coming: .MADRID

The Spanish capital has a city-TLD .MADRID. Each and every new Top-Level-Domain is a new gateway for cybersquatters to find new opportunities, whether the new Top-Level-Domains are gTLDs (examples are recurrent as the following table shows) or geoTLDs (see, among many examples, that of ritzcarlton.tokyo). Initially scheduled for April 2019, the sunrise period will run…

201904.23

New gTLD : get prepared for the .MUSIC domain names

The wait is (almost) over! The .MUSIC new gTLD had naturally attracted many registry applicants, including Amazon, Donuts and Google. After a few Legal Rights Objections and Community objections procedures, DotMusic Limited Foundation was finally designated as the .MUSIC registry. Its program includes an advisory committee in which all the stakeholder of the music industry…

201904.14

Trademarks and domain names: it’s hard to be an acronym trademark!

At the conclusion of the WIPO D2019-0263 case, the panelist rejected the request from Groupement des cartes bancaires to obtain the transfer of the domain name cb.markets (WIPO, D2019-0263, Grouping Bank Cards v. Domain Administrator, Coinbase, Inc., April 2, 2019, denied). It is essentially on the ground of the criterion relating to the right or…

201904.04

General availability of all .uk domains

We wish to remind you that there are now less than three months left for owners of domains registered under.co.uk, .org.uk and .me.uk to secure the equivalent .uk domain. Back in 2014, the .uk registry Nominet launched this top-level domain to the market. The owners of .co.uk, .org.uk and .me.uk registrations on 28 October 2013…

201903.28

New gTLDs: Do not forget the preventive registrations!

Since the new gTLDs offer new opportunities for brand owners, they also offer cybersquatters the same opportunities. It suffices to observe the (more or less recent) decisions made under the auspices of the World Intellectual Property Organization to note an upsurge in cybersquatting by the registration and use of non-similar domain names (typosquatting) but identical…

201903.15

WIPO Statistics: Cybersquatting Complaints Hits a New Record

Unsurprisingly, there has never been so much cybersquatting. Figures from the World Intellectual Property Organization (WIPO) Arbitration and Mediation Center indicate that “the number of cybersquatting cases at WIPO increases by 12% to reach a new record in 2018” (wipo.int, March 15, 2019). WIPO is one of the institutions accredited by the Internet Corporation for…

201903.04

Cyber attacks on the DNS: ICANN urges to deploy the DNSSEC protocol

In recent weeks, several authorities have reported an upsurge of coordinated malicious acts against the Internet Domain Name System (“DNS”) infrastructure, the backbone of the Internet. Ongoing attacks raise concerns about their persistence, magnitude, and the concomitant use of several methods. On January 10, 2019, based on reports issued by companies specializing in cybersecurity, the…

201902.27

A welcome partnership between a ccTLD registry and a national industrial property office

Afnic (the registry in charge of French ccTLDs, afnic.fr) and the French National Institute of Industrial Property (inpi.fr) have announced a partnership with the view of raising awareness of trademark and domain name owners as to the need to proceed, systematically and concomitantly, with trademarks and domain name registrations. This awareness campaign will, at least…

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,…