Domain Names

News & Analysis as of

And the Winner is? Digital Platform Liability for Trademark Infringement

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

MarkIt to MarketTM - September 2015

The September issue of Sterne Kessler's MarkIt to Market™ newsletter discusses considerations when filing a petition under the USPTO pilot program, outlines what you should know when protecting a trademark for wearable...more

Common IP pitfalls every business can avoid

As a business owner or manager, you have probably experienced or at least heard about costly and disruptive intellectual property infringement lawsuits. You may also be very concerned about protecting your company’s customer...more

Proactive Trademark Selection Can Add Value To A Company’s Assets And Avoid Problems

Incorporation typically includes registration of a corporate name. Some entrepreneurs do not realize, however, that corporate name registration alone is unlikely to provide trademark protection. Even worse, although state...more

Blog: Maintaining Control of Your Brand Among 1,200 New gTLDs

The authors of every successful business strategy know that a company must protect its trade marks and its brand from the outset. The primary means of doing so is to register trade marks in each of the territories in which...more

Blog: Protecting Your Brand Online with URS and UDRP

If you discover someone making impermissible use of your trade mark in a domain name, the chances are you will need to, and will want to, take action to regain control of your trade mark. The form of the action you take will...more

Marshmallow Justice: 10 Tales of Legal Fluff and Other Stuff

Just about one hundred years ago, Archibald Query of Somerville, Massachusetts invented the first commercial marshmallow cream, which he pedaled door-to-door in Union Square. Around 1917, he sold the recipe for $500 to two...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

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

MarkIt to Market - August 2015

The August issue of Sterne Kessler's MarkIt to MarketTM newsletter discusses consent agreements and how to avoid naked consent, suggests 5 steps for protecting shrinking trademarks, and provides an updated list of the Sunrise...more

Business E-mail Compromise Scam v2.0

In March, we reported on the Business E-mail Compromise (BEC) scam where criminals target employees responsible for wiring company money, and trick them into wiring money under false pretenses to fraudulent accounts...more Suffers Data Breach Affecting 93,000 Customers

The list of companies hit by cyber-attacks continues to grow.  This time, Florida-based web hosting company,, has announced that it suffered a data breach that may have compromised credit card information and other...more

The Dot-com Era Is Over, Welcome to .Anything

For both new and existing businesses, new generic top-level domains (gTLDs) offer increased flexibility and opportunities for an expanded online presence. A gTLD is the part of a web address that comes after the “dot” (“.”)....more

Six Key Takeaways from ICANN 53 in Buenos Aires

The 53rd international meeting of the Internet Corporation for Assigned Names and Numbers (ICANN) formally concluded on Thursday, June 25, 2015, in Buenos Aires, Argentina. As always, the ICANN community discussed several...more

The Katten Kattwalk - Issue 07

Happy summer! We are seeing some great new styles this summer here on Madison Avenue, and of course, there are a number of hot legal issues to consider as we head into the fall. Our latest issue discusses the applicability of...more

Cuba Si! Trade With Cuba … Not Quite Yet

There has been much fanfare surrounding the reestablishment of diplomatic relations with Cuba, starting with President Obama’s announcement of the resumption of bilateral relations, and followed by the formal establishment of...more

United States and Canada Respond to ICANN’s Concerns over the “.sucks” Domain

In April 2015, the General Counsel of the Internet Corporation for Assigned Names and Numbers (“ICANN”) sent a letter to the United States’ Federal Trade Commission (the “FTC”) and Canada’s Office of Consumer Affairs (the...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

MarkIt to MarketTM | June 2015

In This Issue: - Hashtag Trademarks: #ItsAllAboutTheUse - Upcoming Changes in Canadian Trade Mark Trademark Law - Changes in U.S Certification Mark Requirements - gTLD Sunrise Periods Now Open - The...more

Protecting Your Trademark from “.sucks” and “.porn”

Thousands of new generic top-level Internet domains (“gTLDs”) are opening up for registration. While many of these new gTLDs provide marketing opportunities for companies and other entities—for example, financial institutions...more

Securing a “.bank” Domain during the Upcoming Sunrise Period

The “.bank” top-level Internet domain will soon be available to verified financial institutions, offering specialized URLs and enhanced security features to members of the banking community that act quickly to secure their...more

Is a “” Domain Name Worth $2,500 per Year?

The sunrise period for "dot sucks," the new generic top level domain (gTLD), opened on March 30, 2015 and ends on June 19, 2015. During the sunrise period, the suggested retail price per .sucks domain name registration is...more

Corporate Housekeeping Tips: Keeping Your Website in Tip Top Shape

Among the other areas of your business that you need to keep in order, don’t forget your website. Your website is the company’s digital storefront to the public. Protecting it is paramount to protecting your brand. Below is a...more

1f You Can R3ad Th15 – Security and Scam Alert

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

Seven Key Topics to Track During ICANN 53 in Buenos Aires

The 53rd international meeting of the Internet Corporation for Assigned Names and Numbers (ICANN) commences in earnest on Monday, June 22, 2015, in Buenos Aires, Argentina, with some sessions beginning as early as Saturday,...more

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