Domain Management

Reasons Why You Should NOT Apply for a .BRAND New gTLD

There are two kinds of new domain name extensions: those dedicated to selling domain names through the network of accredited Registrars and those dedicated to a personnel use. I call these "dotBRANDs" or ".brand" new gTLDs since they are used - most of the time - by Trademarks for their own benefit. This article focuses on .BRAND new generic Top-Level Domains. In the ICANN vocabulary, these are "Registry Agreements with Specification 13". more

Domains and the Freedom to Speak

For a very long time, predating the birth of ICANN, there's been a running battle about what should be required when one registers domain names. To oversimplify quite a lot, one side sees domain names as an essential component of free speech, so anyone should be able to register any domain without limit, the other notes that they're primarily used for commercial purposes and they enable quite a lot of mischief, so the more control, the better. more

Typosquatting as Per Se Cybersquatting Unless Proved Otherwise

The quintessence of typosquatting is syntactical variation: adding, omitting, replacing, substituting, and transposing words and letters. Since these minor variations are mostly indefensible, respondents rarely respond to complaints, although as I will explain in a moment there can also be innocent and good faith syntactical variations which are not typosquatting. It follows that if there are defenses, respondents should prudently respond and explain their choices because default generally favors complainants. more

The Trembling Trademark Owners

Why is so much fear being created in the name of protecting trademark owners? Say, if ICANN allowed some third party a generic Top-Level Domain (gTLD) called .panasonic will the sky fall? No, not at all, as Panasonic, the true and rightful TM holder will hit the unauthorized gTLD with a 2x4 and no judge would oppose issuing a cease-and-desist order. Now the other question is... more

Let’s Be Careful Out There: Bogus Windows Domains

Last week, my colleagues over at Sunbelt Software discovered a bogus Windows domain being registered earlier this month (where the "w" in "windows" is actually two "v"s). Today, I've been alerted to the fact that are several additional Windows domains which have registered where the "w"s have been also been replaced with "v"s... more

Who Will Give Birth to the gTLD’s First Billion-Dollar Domain Baby?

When all you have is a hammer, everything appears to be a nail. The generic Top-Level Domains (gTLDs) are not just about trademark filing and battle posturing or cyber-squatting. They are about the potential to create unusual global intellectual properties offering multiple opportunities for rapid image expansion and - most importantly - the achievement of market domination via name identity. more

“Objective” and “Objectivity” in UDRP Decision Making

No one will disagree that disputes before arbitral tribunals and courts should be determined on the merits. I have noticed that some Panels appointed under the Uniform Domain Name Dispute Resolution Policy (UDRP) have employed the words "objective" and "objectively" in their recent decisions. In pondering these linguistic choices, it seems to me that there are two possible reasons for their use; the first is more acceptable than the second. more

Comments on Economics Study of ICANN’s New TLDs

ICANN has taken another crack at the question of the economics of launching new top-level domains (TLDs). The first report that the group commissioned on the subject was greeted by a loud and unhappy uproar. Now we have the preliminary draft of a new report, this one by professors Katz, Rosston, and Sullivan. It is insightful and analytic, but the final version needs to consider the theoretical and empirical issues... more

So, You Claim to Have an Unregistered Mark! Is there Cybersquatting?

Complainants have standing to proceed with a claim of cybersquatting under the Uniform Domain Name Dispute Resolution Policy (UDRP) if the accused "domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights" (4(a)(i) of the Policy). Quickly within the first full year of the Policy's implementation (2000) Panels construed "rights" to include unregistered as well as registered marks, a construction swiftly adopted by consensus. more

End of Cybersquatting? The gTLD Advantage

On the other hand, major dot brand generic Top-Level Domains (gTLDs) are for internal and controlled sub registrations, they would not be open to first come public offerings and therefore it makes no sense for IBM to plan advance purchase of ibm.canon, as Canon, owner of their own gTLD dot canon, unless mutually agreed between two brands, would have no incentive to sell such a registration to a cyber squatter or to anyone else for that matter. more

Challenging UDRP Awards in Courts of Competent Jurisdiction

The Uniform Domain Name Dispute Resolution Policy (UDRP) is not an exclusive forum for the resolution of domain names accused of cybersquatting even though registration agreements use the word "mandatory" in the event of third-party claims. The UDRP is mandatory only in the sense that respondents are "obliged by virtue of the [registration] agreement to recognize the validity of a proceeding initiated by a third-party claimant." more

Undesirable Consequences of Empirical Studies on Cybersquatting

Empirical studies on cyber- and typosquatting (for example, Moore and Edelman's "Measuring the Perpetrators and Funds of Typosquatting") may inadvertently encourage bad behavior. People tend to do what most other people are doing, even when the given act is presented to them as something wrong. more

Satisfying the Evidentiary Demands of the UDRP

It continues to surprise that some counsel in proceedings under the Uniform Domain Dispute Resolution Policy (UDRP) are unaware or oblivious of its evidentiary demands, by which I mean they file and certify complaints with insufficient evidence either of their clients' rights or their claims. Because the UDRP requires conjunctive proof of bad faith registration and bad faith use (as opposed to the disjunctive model of the Anticybersquatting Consumer Protection Act), it should be ingrained for counsel experienced in the jurisprudence to know they cannot hope to succeed with marks postdating registration of domain names. more

Criminal Checks Needed for Domain Name Tasting, Kiting, Spying

International organisations should step in to prevent the "tasting," "kiting" and "spying" related to Internet domain names, say representatives from the US telecommunications and trademark industries. These new activities are dramatically altering online commerce and impacting legitimate businesses, and the United States Federal Trade Commission (FTC), World Intellectual Property Organization (WIPO) and the Internet Corporation for Assigned Names and Numbers (ICANN) should take action, they say. The US Anti-Cybersquatting Consumer Protection Act (ACPA) had too many loopholes given the actual trends in the domain name secondary market, said Sarah Deutsch, vice president and associate general counsel for Verizon, and Marilyn Cade, former AT&T lobbyist and now consultant on Internet and technology issues... more

Looking Ahead - UDRP Bad Faith Analysis and New gTLDs

The Internet, at nearly every stage of its evolution, has effected change in existing intellectual property industries as those industries struggle to keep up with the march of technological advancement. For example, the entertainment industry has seen widespread piracy and bootlegging of just and soon-to-be released movies as a result of the increased availability of broadband Internet access in the home, and efficient peer-to-peer file-sharing technologies online. In response the entertainment industry has backed a wave of proposed legislation including the maligned Stop Online Piracy Act (SOPA) and Protect IP Act (PIPA). more