Market Insight

Updates from an international team of correspondents who report on recent developments in trademark law and practice in their home jurisdictions, as well as strategic issues and those relating to brand protection, portfolio management and value creation.

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Domain name policing and enforcement

21 JULY 2022

The limits of the UDRP in trademark and commercial disputes

Many cases are being dismissed by UDRP panels on the basis that they exceed the scope of the panel. Looking at examples of such cases can give brand owners critical insights into how to avoid such issues.

09 JUNE 2022

How strong trademarks such as NIKE and MARLBORO can fail in cybersquatting cases

Past cases warn would-be complainants of the need to conduct a thorough investigation into a domain name registrant’s motives before filing a UDRP complaint. Where a registrant holds a domain for its generic value, rights holders are unlikely to succeed even if they have strong marks.

26 MAY 2022

How generic word marks can prevail in cybersquatting cases

A case involving the generic term ‘polka dot’ demonstrates how brand owners can still recover generic domain names when registrants use them in a manner that directly relates to their trademark.

31 MARCH 2022

Recent cases turn out mixed results in linking serial cybersquatters

A series of cases involving two prominent cybersquatters highlights a disparity between the venues of WIPO and Forum when it comes to consolidating cybersquatting parties under the UDRP.

10 MARCH 2022

WIPO begins offering new ‘.bh’ dispute resolution service

A new dispute policy offers brand owners a way to enforce their IP rights in Bahrain. This review highlights the key differences from the UDRP

11 NOVEMBER 2021

UDRP first element: one letter difference, but not confusingly similar

While a difference of one letter between a trademark and a domain name is often considered to qualify as ‘confusingly similar’, closer analysis of exceptions to this principle provides valuable illumination to rights holders.

07 OCTOBER 2021

How to defend against opportunists in the arena of personal names and unregistered rights

Emma Raducanu’s historic win at the US Open has prompted a flood of domain name registrations attempting to capitalise on her name. The UDRP does not explicitly provide standing for unregistered personal names, however, there are proven ways to protect oneself against opportunists.

23 SEPTEMBER 2021

Recent UDRP cases reveal trademark applications are being targeted by cybersquatters

A recent trend of cybersquatting by one individual showcases the need to coordinate domain name registrations alongside trademark applications and the importance of understanding the UDRP’s stance on opportunism.

19 AUGUST 2021

Why domain consolidation and licensing are crucial for trademark protection

Domain management has become essential to retaining brand value online — it has also become more complex. Understanding the importance of consolidating all branded domain names into one authorised channel should now be standard for brand owners and managers.

05 AUGUST 2021

Why lawyers are ideally placed to handle domain management

In recent years domain names have become critical to brand identity and marketing efforts, so naturally fraudsters have been attracted to them. However, legal departments can take crucial measures to strengthen their company’s legal position online, with lawyers, especially those specialising in intellectual property, ideally placed to take on this increasingly important role.

22 JULY 2021

Trademark versus geographical term – the Gorgonzola UDRP cases

Gorgonzola is a protected geographical indicator in the European Union but recent cases involving the owner of the GORGONZOLA figurative mark raise questions as to its protection under the UDRP.

01 JULY 2021

Punishment of reverse domain name hijacking – a fair reprimand or far too lenient?

Experts discuss why reverse domain name hijacking (RDNH) remains an issue with the UDRP, and whether the repercussions for RDNH will, or should, be harsher in the future.

27 MAY 2021

Are takedowns the most effective solution to tackling online threats?

Although takedowns are an efficient solution to stop an immediate threat to a brand, they should be carried out in combination with other legal measures when it comes to online infringement.

06 MAY 2021

New ‘.sa’ dispute policy added to WIPO’s repertoire

A thorough breakdown of the key factors of ‘.sa’ domain name disputes highlights how brand owners can make use of the new policy.

22 APRIL 2021

What actions should brand owners take to comply with the new ‘.au’ licensing rules?

Domain name experts consider the new ‘.au’ licensing rules and the impact that they have on brand owners, providing guidelines for those potentially affected.

15 APRIL 2021

Understanding the UDRP: how counsel can overcome uncertainty in proceedings

Counsel often has the difficult task of assessing the likelihood of success in UDRP proceedings, which can lead to giving percentage estimates to clients. However, deeper understanding of the policy and careful assessment of a case help counsel identify and convey shortcomings to their clients early on.

08 APRIL 2021

Limitations of the concept of ‘constructive notice’ in the UDRP

The concept of ‘constructive notice’ has been discussed in several UDRP decisions in the past. However, it is only ever applied in narrow circumstances and complainants attempting to rely on it face a number of risks.

18 MARCH 2021

Rightmove successfully proves similarity in ‘.uk’ dispute

Rightmove has recovered the domain name ‘righttrade.uk’ through the ‘.uk’ registry domain dispute resolution procedure, after successfully proving that the domain name was similar enough to the RIGHTMOVE trademark.

04 MARCH 2021

How UDRP proceedings are helping brands tackle punysquatting

Punycode cybersquatting can cause significant damage to reputable brands. A number of cases, including one targeting BMW customers, reveals why brand owners – especially those that do not use the Latin alphabet – should familiarise themselves with the best methods of protecting their domain names from such attacks.

18 FEBRUARY 2021

Post-Brexit roadmap – restrictions on ‘.fr’ domain registrations explained

The United Kingdom’s departure from the European Union has had major consequences for UK residents looking to register ‘.fr’ domain names. Here are the key points for brand owners to be aware of.

28 JANUARY 2021

Cybersquatting trends and strategies that brand owners need to know

As the covid-19 pandemic has led to a surge in online scams, it is vital that brand owners are fully versed in protecting their reputation, goods and services. With cybersquatting being the main form of online fraud, experts give their insight into how best to tackle this.

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