Law

Law / Featured Blogs

Statutory Remedies for UDRP Grievants

The U.S. is unusual in that grievants of a UDRP award have a statutory remedy from an adverse UDRP award, namely an action for declaratory judgement under the Anticybersquatting Consumer Protection Act (ACPA). The action is not an appeal, but a de novo assessment of the parties' rights, either that the domain name holder is cybersquatting or its registration was lawful. Under U.S. law UDRP awards are not treated as arbitration awards subject to the Federal Arbitration Act but as new disputes. more»

The DotBible Litmus Test for Domain Name Dispute Panelists

A dispute policy for the new '.bible' top-level domain name requires panelists who agree to hear cases to affirm that they "enthusiastically support the mission of American Bible Society" and that they "believe that the Bible is the Word of God which brings salvation through Christ." The DotBible Community Dispute Resolution Policy appears to be the first domain name dispute policy that requires panelists to take a religious oath - or, for that matter, an oath other than anything related to maintaining neutrality. more»

Which Direction Will the Internet Go? Take Our Survey and Help Us Explore the Forces at Work

In the past seven years, the number of people online has essentially doubled, from 1.7 billion in 2009 to about 3.4 billion today. New and innovative services have also emerged and people and companies around the world are using the Internet in ways barely imagined at the turn of the decade. Looking ahead to the next five to seven years, there are many forces at work that could have a significant impact on the Internet. more»

Disputes Falling Outside the Scope of the UDRP

The UDRP is a forum of limited jurisdiction designed for trademark owners to combat a certain kind of tortious (sometimes tipping to criminal) conduct by which registrants register domain names with the bad faith intent of taking economic advantage of owner's marks and injuring consumers by beguiling them to disclose personal information. The forum is not open to trademark owners whose claims are outside its scope, even though they may include allegations of cybersquatting. more»

Declaring and Declining to Find Reverse Domain Name Hijacking

What to one panelist is clearly bad faith conduct in filing a UDRP complaint, to another is excusable for lack of proof. The disagreement over reverse domain name hijacking centers on the kind of evidence necessary to justify it and the nature of the burden. RDNH is defined as "using the UDRP in bad faith to attempt to deprive a registered domain-name holder of a domain name." Rule 1, Definitions. more»

Unlawful Targeting of Trademarks and Consumers in Registering Domain Names

Unlike trademark applications which go through a lengthy examination process before advancing to registration, anyone (anywhere in the world) can register a domain name identical or confusingly similar to a trademark - instantly and no questions asked, at least, in the traditional space (the legacy gTLDs)! With the new gTLDs registrants will receive notice of possible infringement if the brands are registered with the Trademark Mark Clearing House, but notices do not function as injunctions to block registrants from registering infringing names. more»

Using the URS as a Preliminary Injunction for Domain Name Disputes

As I've written before, the Uniform Rapid Suspension System (URS) - the domain name dispute policy applicable to the new generic top-level domains (gTLDs) - is just not catching on. Whether because of its limited suspension remedy, high burden of proof or other reasons, the URS remains unpopular among trademark owners. However, there's one interesting use to which the URS can be put. more»

Proving Common Law Rights Predating Domain Name Registration

The trademark rights required for standing under paragraph 4(a)(i) of the Uniform Dispute Resolution Policy (UDRP) refer to both registered and unregistered rights. Complainants with registered trademarks satisfy the requirement by submitting their certificates of registration. However, and not surprisingly, complainants with unregistered trademarks have to demonstrate that the alleged marks qualify as such, which requires that complainants prove both secondary meaning of the marks and their distinctiveness prior to the registration of the domain name. more»

Is the Internet a Tobacco Product?

Audacity by federal policy makers can be admirable, at least in some cases, but it can a bit more problematic in others. A case in point is the Food and Drug Administration's "deeming" of the internet to be a tobacco product. The FDA explained that it was exercising its authority under the Family Smoking Prevention and Tobacco Control Act which gave the agency an extensive set of duties, responsibilities and authorities over "tobacco products." more»

Reflections on the G7 ICT Ministers Meeting in Japan

On April 30, 2016, ICT Ministers of the "G7 group" concluded their deliberations in the beautiful city of Takamatsu, Kagawa prefecture in Japan. After months of preparatory work and two full days of discussions, the ICT Ministers of the USA, UK, France, Italy, Japan, Canada and Germany plus the European Union issued a joint declaration that: recognizes our digitally connected world; commits to mutual goals and, once again; reaffirms the multistakeholder model for the governance issues facing the deployment, development and evolution of the global Internet. more»