News & Analysis as of

Cybersquatting Domain Names

China: Cybersquatter asks Chinese court to declare its own domain names invalid

by Hogan Lovells on

The Beijing Haidian District People’s Court has recently heard a case in which a domain name registrant requested the court to declare its domain name registration contracts invalid. In this somewhat unusual case, the court...more

Welcome to the WIPO overview 3.0

by Hogan Lovells on

The World Intellectual Property Organization (WIPO) has recently updated its WIPO Overview of WIPO Panel Views on Selected UDRP Questions, the previous edition of which (WIPO Overview 2.0) was published in 2011....more

gTLD Sunrise Periods Now Open

As first reported in our December 2013 newsletter, the first new generic top-level domains (gTLDs, the group of letters after the "dot" in a domain name) have launched their "Sunrise" registration periods. Please contact us...more

WIPO: Cybersquatting reaches all-time high with the introduction of new gTLDs

by Hogan Lovells on

The World Intellectual Property Organization (WIPO), the United Nations agency based in Geneva that administers the Uniform Domain Name Dispute Resolution Policy (UDRP), issued a press release last month revealing that...more

How to combat the risks of impersonation emails, imitative domains

by Thompson Coburn LLP on

Amid the headlines and legitimate concern about massive data breaches, we too often overlook the danger of targeted fraudulent emails, and imitative domain names and websites....more

A New Domain Name Option for the Insurance Industry

by Carlton Fields on

Global insurance industry members have a new online tool—the “.insurance” domain name extension. This generic top level domain (gTLD), governed by insurance industry and security experts, is reserved solely for verified...more

Re-Registration of a Domain Name Constitutes “Registration” Under the ACPA (Jysk Bed’N Linen, Inc. v. Monosij Dutta-Roy)

by McDermott Will & Emery on

The U.S. Court of Appeals for the Eleventh Circuit affirmed a district court ruling imposing a mandatory injunction requiring transfer of certain domain names to the trademark rights holder. Jysk Bed’N Linen, Inc. v. Monosij...more

Domain Name Strategies for Start-Up Companies

Just as it is important for start-up companies to be mindful of early-stage trademark and copyright protection strategies (see our guides entitled “Trademark Strategies for Start-Up Companies” and “Copyright Strategies for...more

And the Oscar goes to . . .

The Academy of Motion Picture Arts and Sciences is planning to appeal a September judgment finding that GoDaddy did not violate anti-cybersquatting laws. Part of the Academy’s claim centered around the common practice of...more

GoDaddy victorious in dispute over OSCARS and ACADEMY AWARDS marks | World Trademark Review

by Knobbe Martens on

In Academy of Motion Picture Arts and Sciences v GoDaddy.com, the US District Court for the Central District of California has entered judgment in defendant GoDaddy’s favour, holding that plaintiff Academy of Motion Picture...more

A Clean Sweep for F. Hoffmann-La Roche Domains

Healthcare giant, F. Hoffmann-La Roche (Roche) filed for and was awarded the transfer of 74 domain names that had been registered by multiple individuals. Roche had filed with the World Intellectual Property Organization...more

And the Winner is? Digital Platform Liability for Trademark Infringement

by Fenwick & West LLP on

Much has been made of the question of liability for the operation or furnishing of digital platforms in the copyright context. Since the U.S. Supreme Court ruling that the provider of the Betamax recorder did not itself...more

1f You Can R3ad Th15 – Security and Scam Alert

by McCarter & English, LLP on

You may think there is no value in chasing domain name squatters because customers find your website through search engines, but consider squatters as internal and external security risks. A constantly evolving threat, there...more

A New Weapon to Combat Cybersquatting: File Suit against Domain Registrars and Hosting Companies

by Wilson Elser on

Cybersquatting, under the Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), is registering, trafficking in, or using an Internet domain name with bad faith intent to profit from the goodwill of a...more

The Launch Of .PORN & .ADULT TLDS

by DLA Piper on

In 2011, the Internet Corporation for Assigned Names and Numbers (“ICANN”) made waves by approving the first adult entertainment industry-specific top-level domain (“TLD”), “.XXX,” administered by the ICM Registry. At that...more

UDRP Panel Tells Snapchat to Check Itself Regarding Snapchatcheck.com

By now you’ve probably heard of Snapchat. But if you are not among its growing core base of users between 13 and 23 years of age (probably a good deal younger than you, constant reader) there’s a good chance you are not a...more

Dot Sucks: A Battle Between Trademark Rights and Free speech

by Jaburg Wilk on

When the organization responsible for assigning domain names announced several years ago that it would expand the generic top level domain name system from the previous 21 to an unlimited number, brand owners knew their legal...more

Icann's Trademark Clearinghouse: Keeping Cyber Squatters at Bay?

by Dechert LLP on

Expansion of the domain name system - ICANN (the organisation that coordinates internet domain names) is in the process of expanding the domain name system by introducing hundreds of new global Top Level Domains...more

Germany: More detail around claims against “typo-squatting”?

by DLA Piper on

According to its press release, the German Federal High Court (“BGH”) decided on 22 January (I ZR 164/12) that – in the particular case- the registration of a domain name which was a misspelled version of an already...more

Domain Name Squatting to Gain Leverage Can Trigger "Bad Faith Intent" in an ACPA Claim

by Holland & Knight LLP on

A required element to sustain a claim under the Anti-Cybersquatting Consumer Protection (ACPA) (15 U.S.C. § 1125(d)(1)(A)) is proof that the defendant acted with "bad faith intent to profit from that mark." As bad faith...more

Domain Names – Possession Is 9/10ths Of The Law

by Gray Reed & McGraw on

As 2013 was winding down, the law firm of Dewey, Cheatum & Howe also known as www.BestLawfirmEver.com was calculating its partners’ year end distributions. Before the ink was dry, Dewey announced he was leaving, taking an...more

You May Not Necessarily Be the Master of Your Domain

The ability to associate goods and services with a specific domain name can make or break a business, so much so that companies are still willing to fork over millions to purchase domain names. And although you may consider...more

Innocent Bystanders of Cybersquatting: Neutral Domain Name Registrars - Petroliam Nasional Berhad (Petronas) v. GoDaddy.com, Inc.

by McDermott Will & Emery on

Addressing for the first time the issue of whether the Anticybersquatting Consumer Protection Act (ACPA), which added two cybersquatting causes of action to the Lanham Act, provides for secondary liability, the U.S. Court of...more

U.S. Court of Appeals for the Ninth Circuit Rules There Is No Cause of Action for “Contributory Cybersquatting”

by Fenwick & West LLP on

On December 4, the Ninth Circuit ruled that the 1999 Anticybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d) does not provide a cause of action for contributory cybersquatting. In Petroliam Nasional Berhad...more

Are you ready for the coming explosion of cybersquatting?

by Dickinson Wright on

The next wave of domain-name barbarians is gathering outside the gates. Here’s what you need to do now to keep your trademarks, and your e-commerce, safe. Almost every business has had to deal with cybersquatters –...more

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Cybersecurity

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