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…

202006.01

The .PLACE is open!

The .PLACE sunrise period took place in 2014. The registration conditions were then ordinary. However, in 2018, Donuts (the registry) decided to apply restrictions to this TLD. These restrictions are now lifted, as of June 1, 2020, so that everyone is eligible to register .PLACE domain names.

202006.01

EUIPO and EURid: getting trademarks and domain names at the same time

The European Union Intellectual Property Office (EUIPO) and EURid, the registry of European top-level domains, announce plans to intensify their collaboration with the view of supporting small and medium enterprises in obtaining European trademarks and European domain names. The goal, always desired by IP Twins, aims to facilitate the concomitant obtaining of European trademarks and…

202006.01

UDRP: the improper and unjustified transfer of the domain name home-goods.shop

The UDRP decision FA 1893706, rendered on May 22, 2020, under the aegis of the National Arbitration Forum, deserves careful reading (NAF, FA 1893706, HomeGoods, Inc. v. Jiahongnetwork / jiahongnetwork jiahongnetwork, May 22, 2020, transfer). The dispute was between the owner of the HOMEGOODS trademark (an American company) and the owner of the domain name home-goods.shop…

202005.11

Taobao listed in USTR Notorious Markets Review for the fourth year running

China’s e-commerce giant owned by Alibaba Group, Taobao (淘宝网) has again landed on the annual Review of Notorious Markets for Counterfeiting and Piracy for 2019, released by the Administration’s Office of the United Sates Trade Representative (USTR) on April 29, 2020. It is the fourth year in a row that the largest online marketplace in…

202005.11

China: acquisition of domain name, limitation period and admissibility of the complaint under the China dispute resolution procedure

Extrajudicial procedures for the settlement of disputes relating to Chinese domain names are governed by the China National Domain Name Dispute Resolution Policy (CNNIC Policy) and Rules (CNNIC Rules). Compared to the Uniform Domain Name Dispute Resolution Policy (UDRP), this legal corpus contains special features that, in particular circumstances, can make the case relatively complicated. The HKIAC…