Intellectual Property

Intellectual Property / Featured Blogs

Vulnerabilities of Weak Marks and Uncurated Websites

Dictionary words, alone, combined as phrases, modified by other parts of speech, and single letters that function as marks also retain in parallel their common associations that others may use without offending third-party rights. As a rule of thumb, generic terms are not registrable as marks until they perceivably cross a threshold to suggestive and higher classifications. more

UDRPs Filed - Brand Owners Take Note

After being in the domain industry for over 15 years, there aren't too many things that catch me by surprise, but recently a few UDRP filings have me scratching my head. Both ivi.com and ktg.com have had UDRPs filed against them, and I have to say for anyone holding a valuable domain name, it's a cautionary tale and one that should have folks paying attention to the outcome of each. more

Apple (Not Surprisingly) is Not a Cybersquatter

It's highly unusual for a well-known trademark owner to be accused of cybersquatting, but that's what happened when a Mexican milk producer filed a complaint against Apple Inc. under the Uniform Domain Name Dispute Resolution Policy (UDRP) in an attempt to get the domain name lala.com. Not only did Apple win the case, but the panel issued a finding of "reverse domain name hijacking" (RDNH) against the company that filed the complaint. more

Google Can, at Least for Now, Disregard Canadian Court Order Requiring Deindexing Worldwide

U.S. federal court issues preliminary injunction, holding that enforcement of Canadian order requiring Google to remove search results would run afoul of the Communications Decency Act... Canadian company Equustek prevailed in litigation in Canada against rival Datalink on claims relating to trade secret misappropriation and unfair competition. After the litigation, Equustek asked Google to remove Datalink search results worldwide. Google initially refused altogether... more

Confusing Similarity of Domain Names is Only a 'Standing Requirement' Under the UDRP

WIPO's newest overview of the Uniform Domain Name Dispute Resolution Policy (UDRP) succinctly states what decisions have made clear through the years: The UDRP's first test is only a "standing requirement." Standing, under the law, simply means that a person or company is qualified to assert a legal right. It does not mean or imply that one will necessarily prevail on any claims. The UDRP includes a well-known three-part test that all trademark owners must satisfy to prevail, but the first element has a low threshold. more

Reverse Domain Hijacking Where Complainant Knew but Did Not Disclose Geographic Significance of Mark

In the case of Oy Vallila Interior Ab v. Linkz Internet Services, a 3-member WIPO Panel denied the Complainant's efforts to have the disputed domain name vallila.com transferred because the Complainant did not prove that the Respondent registered and used the disputed domain name in bad faith. The Complainant is in the business of providing fabrics and interior design services and claimed trademark rights in its registered mark VALLILA in the European Union. more

Trademark Rights Paramount to Contract Rights for Domain Names

UDRP decisions come down from providers (principally from WIPO and the Forum) at the rate of 7 to 10 a day. Complainants mostly prevail; this is because in 90% of the cases (more or less that percentage) respondents have no plausible defense and generally don't bother appearing, although default alone is not conclusive of cybersquatting; there must be evidence of infringement. When complainants do not prevail, it is not because they lack rights... more

Will October Be Our Biggest Month Yet for .brand TLDs?

I'll admit I tend to get evangelical when I'm talking about .brands. To me and the team at Neustar, every development in this space is exciting and significant and we're always eager to share the latest news and insights. But you don't have to be a .brands nut to see that the last few weeks have shown some serious signs of momentum. And it makes me wonder, with everything that's developed in just the last week or two, could we be set for October to be the biggest month in .brands we've ever seen? more

One Week Left for the Upcoming Brands and Domains Conference

There is only less than one week left for the second edition of the Brands and Domains conference to take place in The Hague, Netherlands, at the Amrath Kurhaus. The domaining conference will be held during the 2nd and 3rd of October, 'the place to be' for all those whose companies are interested in developing the so-called dotBrands. More than 500 companies have already requested their dotBrand domain, and many of them are already using it, but it is 'together' how we can move forward... more

Beware of Extra Fees in UDRP Proceedings

The Uniform Domain Name Dispute Resolution Policy (UDRP) is known as an inexpensive alternative to litigation (and that's true), but some proceedings can end up costing a trademark owner more than it may have expected. There are generally two additional types of expenses that can arise during the course of a UDRP proceeding: (1) extra filing fees for certain aspects of a case filed at the Forum, and (2) an increased filing fee if the domain name registrant wants a three-member panel to decide the case. more