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21 October 2011

'.brand' or generic gTLD? Some brand owners want both

As the internet community heads to Senegal for next week’s ICANN meeting, which should reveal more details of the GAC’s early warning and objections procedures, likely trends in gTLD applications are emerging.

12 January 2015

Leading gTLD owner responds to criticism over use of trademark terms in marketing materials

gTLD operator ‘.xyz’ has withdrawn a press release that highlighted a number of brand name-related domain names that were being “released to the public”. The removal followed enquiries from World Trademark Review about the motivation for using trademark terms and highlights the challenge facing those marketing gTLDs to brands.

04 August 2017

Our most-read stories of the past 12 months

The WTR Premium Daily email will be taking a summer break over August, with the full intelligence and daily email service for subscribers recommencing on Monday September 4. As we head into our break, here’s a look at the most popular articles and legal updates we have published over the past 12 months – with coverage of a call for an improved YouTube takedown process just beating the news that Google has become the world’s most valuable brand to top place.

02 April 2015

Donuts’ marketing offensive tops list of most-read WTR stories in March

The online world features prominently in the top-10 list of most-read WTR blogs last month, with coverage of the marketing campaign launched by Donuts, the largest registry for new generic top-level domain names, taking top spot.

11 December 2012

'.pw' to be relaunched as the 'professional web' extension

‘.pw’, the ccTLD for Palau, an island nation that forms part of Micronesia, is soon to be relaunched. When ‘.pw’ was first launched in 2004, it was marketed as short for ‘personal web’. This time, ‘.pw’ will be marketed differently in an attempt to attract a larger public. During the sunrise period, holders of any trademark registered before December 1 2012 will be able to apply for ‘.pw’ domain names that are an exact or close match to their mark.

10 May 2019

Russian Supreme Court plenum adopts ruling providing guidance on IP issues

Shortly before World IP Day the plenum of the Supreme Court adopted a ruling on IP issues. The ruling document contains important guidelines and clarifications of the law, which are obligatory for all courts.

20 April 2016

Supreme Court declares Verkkokauppa.com mark to be well known and worthy of protection

In Verkkokauppa.com v Veneilijänverkkokauppa.com the Supreme Court has quashed two lower-court decisions, ruling in favour of the owner of Finnish trademark Verkkokauppa.com. The action was based on the 2004 registered word trademark covering "retail and e-commerce" in Class 35.

01 July 2017

The growing world of ‘.brands’

Five years on from the introduction of new generic top-level domains, more and more ‘.brands’ are going live, giving potential applicants the opportunity to assess their current deployment

31 August 2014

United Kingdom: Now is the time for review

The online domain expansion raises a number of issues for UK rights holders.

25 April 2016

Exclusive survey shows impact of new gTLDs on trademark enforcement strategies

Despite hundreds of new generic top-level domains hitting the market in 2015, our latest Global Trademark Benchmarking Survey reveals that concern over the impact of the rollout is abating. The results also suggest that the proactive approach taken by trademark counsel has eased the pressure created by the influx of launches. However, there is still work to be done.

18 September 2014

Etsy expands on Redskins ban as pressure over team name grows

Over the past week pressure to change the Washington Redskins’ team name has grown, with the threat of legislation to end the National Football League’s tax-exempt status if it does not act. Online marketplace Etsy has also announced that it will no longer permit the sale of products bearing the team’s name or logo. While some have questioned the policy, a spokesperson for the site has expanded on the site’s approach to takedown and marketplace policing.

27 May 2011

Alibaba: our notice and takedown process is misunderstood

Convene a group of brand owners who spend their days fighting counterfeiters and you can bet that they will agree that Alibaba.com is high on their hunt list. The multibillion-dollar Chinese B2B trading platform operates a unique notice and takedown procedure to address this problem, but the company’s senior legal director has told WTR that many lawyers don’t know how to use it.

01 August 2014

Bombay High Court restrains defendant from using metatags similar to plaintiff's mark

In People Interactive (I) Pvt Ltd v Gaurav Jerry, the Bombay High Court has issued an ex parte ad interim order restraining the first defendant from using the mark SHAADIHISHAADI.COM, including as part of a domain name or in metatags, on the ground that such use infringed the plaintiff’s mark SHAADI.COM. The court also directed defendant GoDaddy to cancel the first defendant's registration for the corresponding domain name.

10 May 2011

Leading trademark groups revealed in WTR Industry Awards shortlist

Over 1,400 nominations and two months of extensive research later, the shortlist for this year's WTR Industry Awards can now be revealed. The awards recognise the vital work of in-house trademark counsel and identify those teams and individuals that are performing their functions to the highest standards. The winners will be announced one week from today to coincide with INTA’s 133rd annual meeting.

14 March 2019

Rights protection mechanisms review: the future of enforcement?

In 2016 ICANN committed to performing a review of all RPMs before launching any further gTLD expansions. This process will likely shape the RPMs for many years to come, so it is important that the community gets it right – in particular, ensuring the viability and utility of these mechanisms for brand owners without compromising legitimate domain name registrations in good faith.