202009.18

.CONTACT: an imminent sunrise period not to be missed

Donuts is launching the .CONTACT on November 29, 2020. The sunrise period will run until November 28, 2020. This new gTLD is essential for two reasons. First, from a practical point of view, the .CONTACT can be of some use for companies’ communication, particularly for those that deploy on network-type models (among others: licensing, selective…

202009.14

UDRP: the offer of products “compatible” with those of the claimant

JUUL Labs started UDRP proceedings to stop acts of unfair competition and misleading advertisement and, at the same time, obtain the transfer of the juulcompatible.com domain name. Circumstances irresistibly invite to refer to the Oki Data decision. According to this case law established as early as 2001 (WIPO, D2001-0903, Oki Data Americas, Inc. v. ASD, Inc., November…

202009.07

A UDRP case involving a .CEO domain

The statistics of the Arbitration and Mediation Center of the World Intellectual Property Organization (CAM-WIPO) for the year 2019 revealed that the share of new gTLDs in domain name cases was around 10% (ompi.int, April 8, 2020). These cases mainly concerned the following gTLDs: .online (64), .xyz (49), .win (48), .club (34), .top (31), .app (31), .site  (31), .website (.24), .store (.22). Given the multiplicity of new gTLDs, this percentage seems relatively…

202008.24

The perpetuation of trademark infringement by third parties: judgment of the CJEU

The German law firm MBK Rechtsanwälte owns an eponymous trademark, registered for legal services. mk advokaten is also a German law firm that initially operated under the names “mbk rechtsanwälte” (for Germany) and “mbk advokaten” (for the Netherlands). “Initially” because following an infringement action brought by the first, the second was ordered to change its…

202008.13

European Union: a study on evaluation of practices for combating speculative and abusive domain name registrations

In May 2020, a study entitled “evaluation of practices for combating speculative and abusive domain name registrations,” conducted by Fasano Paulovics, was published by the European Commission (European Commission, “Study on evaluation of practices for combating speculative and abusive domain name registrations”, May 2020: ISBN 978-92-76-20634-7). This is a richly documented and ambitious study that…

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…