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…

201905.08

Press review on counterfeiting (April 2019)

On IP Twins Twenty years of imprisonment incurred for a domain name Intellectual Property and Sport: Some Aspects and Tips for World Intellectual Property Day HKIRC launches its registry lock A new cityTLD is coming: .MADRID New gTLD : get prepared for the .MUSIC domain names Valeo wins historical IP case at the Supreme People’s…

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…

201904.05

Memorandum of the White House on the Fight Against Counterfeit and Piracy Goods

The White House has issued a memorandum on the fight against counterfeiting. Président Trump plans to step up the government’s efforts in the fight against online counterfeiting. He plays on a more coordinated approach of the federal government, the institutions concerned and all the actors: “Third-party intermediaries, including online third-party marketplaces, carriers, customs brokers, payment…

201904.04

Alibaba Anti-Counterfeiting Alliance: “1,277 suspects arrested in 2018”

Alibaba’s Anti-Counterfeiting Alliance (“AACA”) announced that criminal investigations in 2018 resulted in the arrest of 1,277 suspects and the closure of 524 manufacturing and distribution sites. The value of seizures of counterfeit goods is estimated at $ 536.2 million. The AACA was established in 2017. It now has 132 members from a wide range of…

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…

201904.03

OECD-EUIPO 2019 Report on Counterfeiting

The Organization for Economic Co-operation and Development (OECD) and the European Union Intellectual Property Office (EUIPO) have published their 2019 report on trends in counterfeiting. It is based on data collected from 2014 to 2016. The previous report, based on data from 2011 to 2013, was published in 2016. Overall, the authors of the report…

201903.19

Domain name Hijacking : Are you protected ?

A recent cyber-attack campaign, attributed to Iranian operators and realized at the DNS level, has sharpened attention to the risks associated with cyber-attacks targeting domain names. In a previous article, we talked about “Cache Poisoning” of “DNS Spoofing” attacks, using inherent vulnerabilities of the DNS system. The DNSSEC is one of the measures allowing to…

201903.13

Press review on counterfeiting (February 2019)

Africa According to Ecofin, sub-Saharan Africa loses $10 billion because of counterfeit tobacco (agenceecofin.com, 4 Feb. 2019). Algeria A jeweler craftsman from Ath Yenni reveals his concern over counterfeit jewelry from China (depechedekabylie.com, 12 Feb. 2019). Brexit Drug manufacturers are worried. In the event of a Brexit without an agreement, the British could not benefit…

201903.11

Sogou targeted by a class action due to an increase in counterfeit sales

The Sogou search engine faces a class action brought by investors who claim to have been unaware of serious regulatory problems when it was listed on the New York Stock Exchange (NYSE) in November 2017. The Sogou company allegedly failed to specify the Chinese authorities were investigating an increase in sales of counterfeits. According to…

201903.04

Amazon Project Zero: a project to eliminate counterfeiting on Amazon platforms

A few days ago, Amazon seemed to be in a turmoil recognizing the possibility of increased judicial and financial risk due to the endemic flood of counterfeits that invades its platforms. Now the e-commerce giant is trying to beat all odds with its aptly named “Amazon Project Zero“. This new tool aims to eradicate counterfeiting…

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…

201902.27

India: towards greater accountability of intermediaries?

Indian authorities are considering amending the Information Technology Act 2000. Article 79 deals with the exemption of intermediaries from liability, imposing on them an obligation of diligence as to the lawfulness of the contents. In the course of 2018, the government informed the elected officials of its determination to modify the legal framework in the…

201902.20

“The Real Threat of Fake Toys”, a White paper from the Toy Association

Founded in 1916, the Toy Association is representing companies that design, produce, license and distribute toys and entertainment products for youth. It has more than 950 members, including Amazon. The Toy Association defends the interests of its members, including the toy safety and brand protection of its members. In this regard, the association has just…

201902.14

Counterfeiting: Amazon Anticipates Increased Judicial Risk

On January 31, 2019, Amazon delivered its annual report to the Securities and Exchange Commission (SEC). After referring to a possible amendment of the US law on the liability of Internet intermediaries, Amazon acknowledged that it could be held liable for the activity of its users, particularly for counterfeiting: “The law relating to the liability…

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,…

201901.28

.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)…

201901.18

Phishing: stay alert!

No, Air France or Futuroscope do not offer free tickets via the WhatsApp phone application. Last weekend, many users of the application have received fraudulent messages appearing to come from these companies. The catch is the same: “Air France offers free tickets to all to celebrate his birthday” or “Futuroscope giving 5 free tickets to 500…

201901.14

Attack on WeTransfer: beware of malwares!

Our Online Brand Protection service reports a new large-scale attack on the electronic documents transfer specialist WeTransfer. We have identified that emails similar to those of WeTransfer are currently being mass-mailed, with a download link very similar to the URLs used by WeTransfer: The attack works in a very simple way: hackers simply registered the…

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….

201812.20

.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…

201812.16

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

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…

201811.06

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…

201810.23

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…