The new TLD Trademark Clearinghouse is about to get a lot of attention -
The TMCH phase of new TLDs is here. Which companies should participate, and how should they approach online brand protection in the coming years?
The Trademark Clearinghouse is now open for business and will soon get a lot of mainstream attention.Remember when .xxx came out and law firms across the country advised their clients to defensively register domains?
Law firms are now sending notices to their clients about signing up for the Trademark Clearinghouse (TMCH), ... read more ...
Tag Archives: legal
Mon 22nd April 2013
Yikes! No consternation this association wanted a improved domain -
Company that filed UDRP uses a truly awful domain name.
Often times a company files a UDRP because they’re using an inferior domain to the one they want.
For example, cases are filed in which the complainant owns a .tv or .net domain and the respondent owns the .com. Of course, the reason the complainant originally registered the other domain was because the .com was already taken.
That’s the case with a just-decided case for GameBreaker.com.
The domain owner ... read more ...
Sat 20th April 2013
ICANN selects second URS provider -
Asian Domain Name Dispute Resolution Centre second to sign up with ICANN for rapid domain suspension system.
ICANN has entered into a memorandum of understanding with Asian Domain Name Dispute Resolution Centre (ADNDRC) to be a provider under Uniform Rapid Suspension (URS).
URS is sort quick and less expensive version of UDRP in which a winning complainant does not get control of the infringing domain name but it is taken offline. URS only applies to the new top level ... read more ...
Fri 19th April 2013
Organizing for Action wasn’t “organized” for the online strategy -
Non-profit failed to secure domain names prior to announcing plans.
Barrack Obama’s campaigns have been praised for their use of the internet to rally the troops. Which is why a domain name screwup by the non-profit successor to his re-election campaign and Organizing for America is rather surprising.
On January 18 First Lady Michelle Obama and Jim Messina announced Organizing for Action, a non-profit community organizer that hopes to rally behind many of Obama’s ... read more ...
Thu 18th April 2013
Name.space sends lawsuit opposite ICANN over new TLDs to Court of Appeals -
Company that offers domain names in alternative root pushes forward with legal challenge.
Alternative root company name.space isn’t letting its beef with ICANN die just yet.
The company has filed an appeal (pdf) with the United States Court of Appeals for the Ninth Circuit after its suit against ICANN was tossed out by a lower court last month.
Name.space offers domain names in an alternate root, and applied to ICANN in 2000 to add 118 of its domains to the “real” ... read more ...
Paul.com fights PaulDotCom.com over trademark -
Two techies fight over “Paul Dot Com”.
The owner of Paul.com is fighting the PaulDotCom security podcast over the latter’s attempt to trademark “PAULDOTCOM”.
In November 2011, Paul Asadoorian filed a trademark application for PAULDOTCOM, the name he uses for his IT security podcast hosted at PaulDotcom.com. Once the mark was published for opposition, the owner of Paul.com filed a challenge with the USPTO Trademark Trial and Appeal Board (TTAB).
Paul Niedermeyer ... read more ...
After announcing new name, 21st Century Fox files UDRP -
Company goes after 6 domains related to new brand.
Last week I scooped that 20th Century Fox would be changing its name to 21st Century Fox thanks to some domain name registrations.
One of the big questions remaining questions is how the company will get the domain name 21stCenturyFox.com, which was registered in 1997.
Well, the company has turned to UDRP to recover some domains related to 21st Century Fox – but it’s not for 21stCenturyFox.com (at least yet).
The ... read more ...
Mon 15th April 2013
Google beats Google in UDRP -
Company wins case against spoofer.
It’s pretty easy to spoof someone else in a whois record, and a recent UDRP is a case in point.
Officially, Google Inc. prevailed over Google Inc. in a UDRP for the domain GoogleDNSService.com.
When you first look at the whois record for this domain you might assume it’s owned by Google:
The name, phone, and address are all those of Google. But you’ll notice that the email address, dns-admin@googlednsservice.com, differs from ... read more ...
Fri 12th April 2013
Ticket Broker loses French Open domains -
French Tennis organization awarded 13 domain names used by ticket broker.
A UDRP panel has ordered ticket broker Ticketfinders International LLC to transfer 13 domain names to Fédération Française de Tennis (FFT).
FFT is the governing body for tennis within France. It also holds trademarks for the French Open, which is also called the Roland Garros tennis tournament and is played at Roland Garros Stadium.
Ticketfinders didn’t formally respond to the complaint, ... read more ...
Demand Media passes a new TLD Initial Evaluation -
Company passes initial evaluation despite rule about UDRP losses.
Demand Media’s new top level domain company, United TLD Holdco, has passed the initial evaluation stage on one of its TLD applications.
The company passed the initial evaluation for Fish.com .fishing today.
Demand Media was the biggest question mark amongst big-name TLD applicants with regards to if it would pass initial evaluation.
Part of the initial evaluation is the background check, and passing ... read more ...
ICANN announces 263 new TLD objections on final list -
263 total objections filed against new top level domain applications.
As per the requirements of the applicant guidebook, ICANN has published a list of all new top level domain objections accepted for consideration.
Below is a summary. You can learn more about how these objections will proceed here.
String Confusion
67 objections based on string confusion were filed.
The top objector was Commercial Connect LLC, which has applied for .shop. It has objected to 9 IDNs ... read more ...
Thu 11th April 2013
CADNA Wants ACPA Amended To Increase Penalties & Cover PPC Providers & Parking Companies - The Collation Against Domain Abuse (CADNA) issued a paper last night calling for lawmaker to increase the penalties for Cybersquatters and to expand the parties that are held responsible for cybersquatting, not only the domain holder, but basically everyone in the monetization food chain, which would including parking and PPC companies presumable the upstream providers including Google by amending the Anticybersquatting Consumer Protection Act (ACPA).
“With much of the nation’s, and ... read more ...
Wed 10th April 2013
CitizenHawk sued after promulgation dual stop & terminate letters -
Man sues domain recovery firm after receiving two cease desist letters.
A San Diego man has sued typosquatting recovery firm CitizenHawk after receiving two cease desist letters.
Michael Eddy says he received letters regarding USSearchReports.com and Naturalizes.com. The first letter said USSearchReports.com infringes the rights of Intelius’ mark for “US Search.com”. The second said that Naturalizes.com infringes the rights of Brown Shoe Company’s mark for ... read more ...
Tue 9th April 2013
eBay patents a exit cocktail adult window -
Company gets patent for way to deliver a pop up window when you leave a web site.
It was once a favorite advertising tool and then a popular last-ditch effort from internet marketers.
Yes, I’m talking about the exit pop up. When you leave a site for good, the site sends one last goodbye…one last drop of monetization…one last effort to make you do something…a pop up window.
eBay was just awarded United States Patent 8,418,078 (pdf) for “Method and system ... read more ...
Mon 8th April 2013
Ontario Court Rules In Favor Of George Kirikos On Pupa.com & Awards $4,500 In Fees - George Kirikos company, Leap Of Faith Financial Services, (Leap) just won a declaratory judgement that is was the lawful owner of the domain name Pupa.com and was awarded its court costs, all arising out of a UDRP filed last year by the Italian cosmetics company Micys. (not Macys).
In June of last year we told you that a UDRP was filed on the domain name Pupa.com, owned by frequent commentator to TheDomains.com, George Kirikos company Leap.
George filed a lawsuit in Ontario Superior Court of ... read more ...
Craigslist sues CraigsTruck.com -
Classifieds site takes issue with delivery service’s name.
Online classifieds site Craigslist has filed a federal lawsuit against a Washington company that offers delivery services under the name Craigstruck.com.
Craigslist alleges that Craigstruck.com is infringing its trademarks and using its name to get more business.
Craigstruck.com matches people who have a truck and are willing to move stuff with people that need something moved. It promotes itself as service ... read more ...
Canadian justice orders association compensate costs over prejudicial domain claim -
George Kirikos gets big court victory; judge orders defendant pay costs.
A Canadian court has ordered Micys Company pay $4,512.45 to George Kirikos’(Leap of Faith Financial Services Inc stemming from a UDRP it filed against the domain name Pupa.com.
Micys filed a UDRP against Pupa.com last year with World Intellectual Property Forum. Micys runs the site Pupa.it, where it sells cosmetics and fashion accessories.
Kirikos decided to sue Micys in Canadian court, which ... read more ...
California seat seller files fit over UrbanHome.com -
Second lawsuit filed after UDRP decision.
The legal expenses are mounting on this one.
Urban Home, the California furniture maker that filed a UDRP on UrbanHome.com, has now filed a federal lawsuit in California to try to get the domain name.
The suit is in response to UrbanHome.com’s owner, Technology Online, filing suit in Nevada to halt the transfer of the domain name.
The WIPO panel found in favor of Urban Home. Technology Online decided to sue to stop the transfer.
I’m ... read more ...
Sat 6th April 2013
Hollywood Reporter: “Godaddy Alleges ‘The Oscars’ Aren’t That Famous” - A story in the Hollywood Reporter of all places has landed domain name registrar Godaddy.com on the front pages
The story talks about the lawsuit that the Academy of Motion Picture Arts and Sciences has against GoDaddy.com for “allegedly trafficking in unauthorized trademarks. The Film Academy (AMPAS) takes issue with GoDaddy’s “CashParking” program wherein its customers are allowed to buy a domain like Oscarbets.com or Oscarsornot.com, “park” that page and collect a portion of revenue ... read more ...
Thu 4th April 2013
U.S. Department of Commerce not ancillary USPS conflict to .mail tip turn domains -
Department of Commerce not backing .mail objections.
Lawrence Strickling, U.S. Department of CommerceLast week I wrote about how the United States Postal Service filed objections to all of the top level domain applications for .mail.
It’s a big waste of money, as in order to prevail the USPS would have to show it has some sort of legal rights to the term “mail”.
ICANN just published a letter from Lawrence Strickling, Assistant Secretary for Communications and ... read more ...
Right of a Dot posts response to private TLD auction antitrust claims -
Company says private auctions do not automatically violate U.S. antitrust law.
Last month new TLD applicant Uniregistry published a press release that announced it would not participate in private auctions for new TLDs due to anti-trust concerns. It based its decision on a verbal conversation with the Department of Justice.
The press release also suggested that “paying off” other new TLD applicants might run afoul of the law.
The release generated an immediate ... read more ...
Tue 2nd April 2013
12 Year After Losing UDRP, College Sues Graduate For $100K Over Same Domain - In a story that appeared in ChristianPost.com, Pensacola Christian College in Pensacola, Fla. has filed a suit against a former graduate Peter Gage over the domain name PensacolaChristianCollege.com (PCC) seeking statutory damages of $100,000 under the Anticybersquatting Consumer Protection Act (ACPA)
It looks like Mr. Gage and the school have been battling it out over this domain since 2001.
Peter Gage graduated in 1996.
In 2001, PCC filed and lost a UDRP against Gage with the panel finding the ... read more ...
Tracy Morgan wins domain name dispute -
Comedian Tracy Morgan can now tell jokes at TracyMorgan.com.
A WIPO panel has ordered the domain TracyMorgan.com be transferred to the comedian. (Photo: David Shankbone)Comedian Tracy Morgan laughs about a lot of stuff, but not about how he didn’t own the domain TracyMorgan.com.
In January I wrote about how the 30 Rock star had filed a UDRP against the owner of TracyMorgan.com. At the time, the parked page on the domain included links such as “Tracy Morgan Comedian”, ... read more ...
TechCrunch fights to take down copycat blog -
TechCrunch demands NewTechCrunch.com domain; site owner tries to rebrand.
TechCrunch’s parent company AOL has filed a complaint with National Arbitration Forum to take down the copycat blog NewTechCrunch.com.
As of right now, NewTechCrunch.com does not resolve. But until recently the domain resolved to a web site that included articles about laptops, tablets, and phones (see photo from Archive.org, March 11).
Likely due to TechCrunch’s actions, the owners of the ... read more ...
Mon 1st April 2013
Video: How to contention an shabby WHOIS complaint -
The whois complaint form is now part of ICANN’s web site.
Long time readers know that I’m not a fan of videos when you can explain something with text.
Yet I realize that how one person prefers to consume media isn’t necessarily the same as everyone. So today I’m posting my first DNW “How To” video.
The video shows how to submit an invalid whois report on ICANN.org. ICANN recently added the whois complaint form directly to its web site, but the process ... read more ...