Blog results - found 21
USPTO director makes first public comments, Louboutin dismisses media speculation, and ‘.com’ rises: news round-up
In our latest news round-up we look at the first public comments from the USPTO’s new director, the Japanese government’s partnership with Nigeria to tackle fakes, further details on trademarks after Brexit, and much more.
On World Trademark Review we have previously reported on the General Data Protection Regulation (GDPR) and its potential impact on rights holders’ access to accurate and reliable WHOIS data. In this guest blog, Brian J Winterfeldt, principal of the Winterfeldt IP Group and president of ICANN’s Intellectual Property Constituency, analyses the proposed models for compliance - one of which would effectively result in the WHOIS database as we know it today going dark.
The Internet Commerce Association has published a document making a series of recommended reforms for the Uniform Domain Name Dispute Resolution Policy (UDRP). The statement takes aim at the management of the process by existing providers, as well as the conduct of some panellists arguing that the emphasis on recruiting from the trademark bar is leading to imbalance in the system. In response, a World Intellectual Property Office spokesperson characterised this focus on the UDRP as “remarkable”, adding that it “betrays a clear misunderstanding of the actual mechanics of impartial and efficient ADR case management”.
New research has revealed the significant security risk posed by domain name homograph attacks that utilise internationalised domain names to engage in phishing. Speaking to World Trademark Review, the author of the study has warned that not enough attention is being paid to the problem by brand owners and advised steps to minimise the risk of such attacks.
A law firm commissioned by the Internet Corporation for Assigned Names and Numbers to explore the impact of the General Data Protection Regulation on publicly available WHOIS data has recommended a temporary ‘layered access’ solution be adopted. While this will buy time to engage in further talks with authorities on the future of WHOIS, it notes that such a layered approach is problematic for rights holders seeking to process data to investigate IP infringements. In short, the protection of trademark rights looks set to become more burdensome.
At this week’s Internet Corporation for Assigned Names and Numbers meeting, representatives from e-commerce giant Amazon received a hostile reception from the Governmental Advisory Committee while seeking to reach a compromise over its stalled ‘.amazon’ generic top-level domain application. In a session on Monday afternoon, the company was told that it had blown an opportunity to reach a compromise and that allowing the application to proceed would open a “Pandora’s box”.
Amazon calls for end to ‘.amazon’ gTLD stand-off; demands prompt action to end dispute with governments
Amazon has called on the Internet Corporation for Assigned Names and Numbers (ICANN) to “immediately approve” its application for the ‘.amazon’ generic top-level domain, noting that prompt action is necessary because “there is no sovereign right under international or national law to the name ‘Amazon”’, with an Independent Review Process Panel having previously ruled that ICANN acted in a manner inconsistent with its bylaws when rejecting the company’s application. The move to end the stand-off over the string is one that all brands should monitor.
At this week’s ICANN meeting in South Africa, the impact and effectiveness of new gTLD rights protection mechanisms has taken centre stage, with one participant voicing concerns that some trademark owners are over-reaching in sunrise applications. The flipside, of course, is that many see the need to implement proactive defensive registrations across a range of strings. Now, a new study from INTA reveals that member registrations in new TLDs have been “overwhelmingly made for defensive purposes”.
ICANN report says “little benefit” in extending gTLD protection mechanisms, despite lack of trademark owner engagement
ICANN has released a draft report on the efficacy of the Trademark Clearinghouse and rights protection mechanisms that suggests that there is little evidence to support an expansion of rights protection mechanisms but the level of input from trademark owners may lead to questions over the findings’ usefulness in ICANN’s future policymaking.
Collaborate now, reduce litigation later: ICANN community urged to reach agreement on IP abuse provisions
In a letter to the Intellectual Property Constituency, ICANN has clarified that, while it will act to ensure that required contractual provisions related to abusive behaviour are included in registry-registrar agreements, its obligation to take action on IP infringing activity ends there. However, World Trademark Review has been told that the issue is “far from resolved”, with the hope that “fruitful” community collaboration will result in a satisfactory outcome.
While the Internet Assigned Numbers Authority transition is something that many IP counsel have not been intrinsically involved in, 2016 INTA president Ronald van Tuijl has characterised the development as something “that trademark owners cannot ignore”. For those following closely, it has been a potentially significant week while the Commerce Department has given ICANN’s proposals a favourable assessment, a bill has been introduced that could halt the handover in its tracks.
Domain industry group outlines self-regulation vision: “Tobacco industry did nothing and regulation was thrust on it”
The prospect of a voluntary copyright and piracy rights protection mechanism, akin to the Trademark Clearinghouse, has been floated by the recently launched Healthy Domains Initiative. While this will raise questions about content policing responsibilities in some quarters, it is a move that many rights holders will welcome.
In March 2014, the US-based National Telecommunications and Information Administration announced its "intent to transition key internet domain name functions to the global multi-stakeholder community". In recent weeks the political debate over the transition has heated up, with 2016 INTA president Ronald van Tuijl viewing it as a development “that trademark owners cannot ignore”.
It was inevitable that the issue of gTLD registries charging trademark owners excessive sunrise fees to register names in gTLD sunrise periods would be high on the agenda of the Intellectual Property Constituency (IPC). At today’s ICANN meeting in Singapore, however, ICANN’s ability to clamp down and prevent brand owners from being held to ransom was in doubt.
Peter Dengate Thrush divides the ICANN community: while many see him as the kind of strong-minded ringleader a multi-stakeholder policy development process requires, others slam him for skipping the concerns of trademark owners and governments in order to hand the domain name industry a liberalised marketplace. This week, Dengate Thrush came to the end of his term as ICANN’s chairman during an extraordinary ICANN meeting in Singapore at which the new gTLD progrmme was approved. WTR spoke to him about the contentious policy development process and how the IP community can continue to work within the multi-stakeholder model.
One of the architects of the trademark-friendly '.co' launch has told WTR that the registry behind the forthcoming '.so' liberalisation will ensure that sunrise applications for domain names that have been reclaimed by mark owners via a successful UDRP will be accepted. This marks another shift in sunrise policy towards tighter trademark protection. The draft '.so' policy is now online.
The great and good from the domain world descended on Nairobi last week to attend the 37th ICANN meeting. As well as rejecting proposals for an ‘expression of interest’ system for those wishing to apply for new gTLDs, the meeting saw the approval of the Trademark Clearinghouse, despite fears that the adoption of protection that excludes marks which have undergone examination on relative grounds would set a “dangerous precedent”.
This week, ICANN opened a 30-day public comment period seeking feedback on whether particular requirements should be imposed on closed generic gTLD applications. The call for comment was issued following increased concern over the potential for companies to gain significant market advantage through closed gTLDs.
As the new gTLD application window closes tonight, ICANN has confirmed when applied-for gTLDs will be announced. The new reveal date will be June 13. While observers will be pleased to know that they will finally be getting to hear who has applied for what, applicants and other stakeholders still face uncertainty over the timescale of the rest of the process.
Concern is growing among the Governmental Advisory Committee (GAC) representatives advising ICANN that a predicted last minute goldrush on new gTLDs will leave the organisation with too little time to process them.
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