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The death knell for bulk domain enquiries? Rights holders voice concern as ICANN reveals proposed WHOIS model
ICANN’s efforts to ensure that the WHOIS function complies with the General Data Protection Regulation have moved to the next stage, with details of its proposed convergence model emerging. However, IP experts have seized on gaps in the model, claiming that it could create significant roadblocks to effective enforcement efforts.
No fan site for tribute band: use of mark in domain name created implied affiliation with complainant
A UDRP panel has ordered the transfer of a domain name that matched the name of a famous pop group and belonged to a tribute band. The decision shows that genuine fan sites conferring a legitimate interest on the holder of a domain name which is identical, or confusingly similar, to a complainant's trademark are quite rare especially when the domain name is identical to the trademark, thus creating an implied sense of affiliation.
Spreading the message the IP offices taking significant strides to engage with the public about trademarks
We take a deep dive into how registries are spreading the trademark message to a wider audience
Online trailblazers the IP offices breaking new ground in digital services, and those falling behind
As national IP registries are encouraged to become "innovation agencies" by offering more non-core tools and services, we look at how offices compare when it comes to digital metrics
With the General Data Protection Regulation (GDPR) becoming enforceable on May 25 2018, all eyes are on its potential impact on rights holders’ access to accurate and reliable WHOIS data. One industry expert warns of the “absurd” policies that could result from incorrect analysis of the regulations adding that cybercriminals “anywhere in the world” could soon become the biggest fans of GDPR.
Democratising trademark data: ambitious call to create non-profit to develop global e-filing standards
In an exclusive guest post for World Trademark Review, the chief executive of IP docketing technology company Alt Legal urges IP offices to work towards, and adopt, universal standards in trademark data and electronics filings. To achieve this, he is calling for the creation of a non-profit organisation tasked with promoting and developing industry best standards in relation to e-filings and trademark databases.
NiRA, the registry responsible for running the ‘.ng’ domain name space, has announced that registrations under ‘.ng’ passed the 100,000 mark in 2017, but noted a slowdown in new domain name registrations and renewals in the last quarter of 2017. The National Information Technology Development Agency, highlighting the general practice of hosting data offshore, argued that hosting data locally would help boost the Nigerian economy.
Gleissner activity called “biggest scam in IP history”, Samsung speculation and USPTO love song: news round-up
In today’s news round-up, we look at heavy metal band Iron Maiden pursuing a group of counterfeiters, the significant changes at the top of the new gTLD leaderboard, and a call for a “flexible IP regime” in Africa.
In a decision under the Syreli alternative dispute resolution (ADR) procedure, a college from the French domain name registry has denied the transfer of a domain name consisting of the name of the complainant under ‘.fr’ due to lack of evidence. The case highlights that complainants must provide sufficient evidence to support their claims under French ADR procedures, as the panel will not perform independent research, contrary to the UDRP.
Logan Paul fiasco shows risk for brands on YouTube; research reveals more YouTubers seeking trademark protection
A number of recent incidents have demonstrated why rights holders must be careful when advertising on YouTube or seeking partnerships with its high-profile stars. New research from World Trademark Review also reveals that content creators on the platform many of which make millions of dollars a year in advertising, sponsorship and merchandise revenue are turning to trademark registrations to protect their channel assets.
A UDRP panel has denied the transfer of a domain name identically reproducing a complainant's trademark for failure to show bad-faith registration, and also made a finding of reverse domain name hijacking for failure to disclose prior communications with the respondent. In the panel's view, the complainant’s actions suggested that the filing of the complaint was "plan B" following several failed attempts to purchase the domain name.
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.
Online and media criticism of a Ram Trucks ad aired during this week’s Super Bowl broadcast continues to rumble on. For its part, parent company Fiat Chrysler Automobiles has stood its ground, noting that the King Estate had given approval of its use of a Martin Luther King Jr sermon. The key question from a brand perspective is whether holding ground in the face of a social media storm is the right approach or whether appeasing critics is the better option.
In our latest news round-up we look at how the Zimbabwe government is hiring a technology company to tackle counterfeit goods, the brands being accused of using “underhand tricks” to fool consumers and a new report looking at the leading Chinese brands.
Scotch Whisky toasts trademark renewal, fake toy epidemic, and IACC looks back on 2017: news round-up
In our latest news round-up we look at the US Senate’s announcement that nominated USPTO director Andrei Iancu will be voted on next week, Costco Korea losing a design infringement suit, ICANN extending its GDPR consideration window, and the retirement of the Swaziland trademark registrar.
In our latest news round-up we look at the European Commission beginning a public consultation for its global counterfeit and piracy watch-list, another new innovation in anti-counterfeiting, a flurry of trademark activity related to the Super Bowl and an initiative by the International Trademark Association which helped homeless people in New York.
In a recent decision under the UDRP, a WIPO panel has denied the transfer of the domain name ‘dishoom.co’ to Dishoom Limited, the owner of a number of registered DISHOOM marks in several jurisdictions. There was insufficient evidence that the domain name was registered and used in bad faith to take advantage of the complainant's trademark.
Pharma brands warned not to be ‘trademark bullies’, Turkey on top, and world’s oldest mark: news round-up
In our latest news round-up we look at Turkey moving to the top of the European trademark filing league, Activision prevailing in a lawsuit in China, a British football club being mocked for its new logo, and the search for the world’s oldest registered mark. Coverage this time from Tim Lince (TJL), Adam Houldsworth (AH) and Timothy Au (TA).
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”.
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