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Every Tuesday and Friday World Trademark Review presents a round-up of news, developments and insights from across the trademark sphere. In the latest edition, we look at the Office of the US Trade Representative reviewing Thailand’s IP status, Canada's advance towards introducing plain packaging, a luxurious approach to generic top-level domain pricing and a scramble for the Amiga trademark.
Lady Gaga sues Radio Gaga, Olympic legend to speak at IP event, UrWork hits out at WeWork: news round-up (Blog)
Every Tuesday and Friday World Trademark Review presents a round-up of news, developments and insights from across the trademark sphere. In the latest edition, we look at trademarks filed in the wake of Hurricane Harvey, a three-time Olympic gold medallist speaking at an IP event and Lady Gaga stoking online anger with a Radio Gaga lawsuit.
Amazon calls for end to ‘.amazon’ gTLD stand-off; demands prompt action to end dispute with governments (Blog)
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.
EFF highlights “trademark bullying” evasion tactics as debate over new gTLD policing heats up (Blog)
The Electronic Frontier Foundation (EFF) and Public Knowledge have published a report advising domain name registrants that, in a bid to “minimise exposure to trademark bullying”, they should avoid registering domains in the new gTLD environment. While counsel may object to the ‘bullying’ label being extended to legitimate enforcement efforts, the report could have a positive payback for policing strategies.
INTA study reveals cost of new gTLDs to brand owners as ICANN community wrestles with RPM review (Blog)
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”.
Pharmacy chain Boots has become the latest company to signal an intention to terminate a registry agreement, this time for the ‘.boots’ top-level domain (TLD). While a negative development for the new generic TLD programme, it should not be viewed as an indicator that ‘.brands’ are losing their lustre on the contrary, the rollout of branded spaces shows no sign of slowing.
MarkMonitor severs relationship with ‘.feedback’ TLD, calls for ICANN to review policies enabling “retaliatory conduct” (Blog)
MarkMonitor has confirmed the termination of all accreditation agreements for the ‘.feedback’ top-level domain, following fallout from a public interest commitment dispute resolution procedure complaint filed by the company and a coalition of brands. The director of domain management at MarkMonitor has further called on ICANN to review how policies permit registry operators to engage in retaliatory conduct against those who raise legitimate compliance complaints.
With nine of 10 top new gTLD registrants, China’s online dominance will worry many brand owners (Blog)
Chinese entities now own almost half of all new generic top-level domain (gTLD) registrations, with nine of the top 10 new gTLD registrants associated with the country, according to recent reports. With another tranche of gTLDs just approved for sale by the Chinese government, many brand owners will be concerned about what this all means for their trademark protection strategies.
‘.feedback’ fires salvo over PICDRP complaint; threatens to “de-accredit” MarkMonitor as a registrar (Blog)
Three weeks after being found in breach of its ICANN compliance obligations as a result of a public interest commitment dispute resolution procedure (PICDRP) complaint, Jay Westerdal, CEO of ‘.feedback’, has fired back at MarkMonitor, one of the parties to the PICDRP. In a letter obtained by World Trademark Review, he alleges that the PICDRP disclosed confidential information and gives MarkMonitor 30 days to cure that breach or face being de-accredited as a registrar for the string.
‘.feedback’ hit with breach notification after brand complaints; ICANN urged to take stronger stance (updated) (Blog)
ICANN has informed the operator of the ‘.feedback’ TLD that it is in breach of its registry agreement, the first instance a registry has been found in breach of its ICANN compliance obligations as a result of a public interest commitment dispute resolution procedure (PICDRP) complaint. However, while characterising the move as “positive”, one of the parties to the complaint has criticised the scope of the panel’s review and hit out at ICANN for not taking stronger action.
Uniform Domain Name Dispute Resolution Policy (UDRP) case filings at WIPO have busted through the 3,000 barrier for the first time, with Philip Morris, AB Electrolux, Hugo Boss, Lego and Michelin revealed as the top complainants.
Preliminary findings of research conducted by IBM indicate that new gTLDs are among the most widely used top-level domains in email spamming activities. With spam containing malicious attachments on the rise, the report notes that new gTLDs are becoming more popular because they allow spammers to vary their domain URLs and thus bypass spam filters.
A letter, co-signed by 21 law professors and practitioners, has slammed the “expansive protections recently demanded by trademark owners”, which they argue “are inconsistent with basic propositions of trademark law”. In response, leading commentators have hit back at the “misleading and inaccurate” arguments made in the letter.
Analysing phish: new study reveals phishers are shifting their sights to new gTLDs and the cloud (Blog)
A study by cybersecurity firm PhishLabs indicates that the volume of phishing attacks grew by almost one-third last year, with cloud storage brands set to overtake financial services as the top targets. Researchers also found that phishing perpetrators are increasingly turning to new gTLDs to dupe internet users.
The original deadline for INTA’s survey on the impact of new gTLDs on brand owners has been extended, with corporate members now having until Friday February 28 to submit their responses. The study is designed to provide empirical data on the real-world cost of the new gTLD programme on trademark protection and policing activities.
In the largest URS decision to date, the National Arbitration Forum has suspended 474 domains using marks owned by Ashley Furniture Industries. The decision comes at a time when the URS, alongside other rights protection mechanisms, is under review, with brand owners being urged to act now to shape the online enforcement environment of tomorrow.
Last year was another busy one in terms of trademark strategy news, and the world’s largest and fastest-developing regional market was often at the centre of it all. World Trademark Review presents a retrospective on some of the key trademark and brand management developments in Asia-Pacific jurisdictions during 2016.
Trademark implications of Brexit, Trump and Samsung Note 7 crisis feature in our most-read list of 2016 (Blog)
As 2016 draws to a close, it’s time to take a look back at the blogs which received the most reads in the past 12 months. Our list includes the brand value hit of Samsung’s Note 7 crisis, Alibaba’s spat with Chinese ecommerce rival JD.com and trademark applications attempting to commercialise the Panama Papers, Brexit and the once-popular ‘meme’ Be Like Bill.
New research from The Coalition Against Domain Name Abuse has revealed the extent of identity squatting targeting this year’s presidential election candidates, as well as members of the US Congress and Senate.
With India registering domains at a leading rate, counsel should reconsider their trademark strategies (Blog)
There is plenty of evidence pointing to China’s growing role in the ownership and management of web domains, including in the context of new generic top-level domains. But recent analysis suggests that India is also upping its game when it comes to claiming online real estate and trademark strategies will have to take this into account.
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