News & Analysis as of

The gTLD Explosion: Changes to Domain Names that All Businesses Should be Aware Of

The universe of domain names within the internet is undergoing radical change and businesses need to be aware of how to navigate in this new world. On June 20, 2011, the Internet Corporation for Assigned Names and Numbers...more

Who owns your domain names?

Asking who owns your domain name is not as silly a question as you might think. And it is one that needs more attention from many businesses. Many small businesses, in particular, treat ownership of their Internet domain...more

German Federal Court of Justice Decides on Deletion of Unused Domains and Typosquatting

German law on internet domains is not codified in a uniform statutory law, but spans over a variety of legal areas such as trademark law, unfair competition law and naming rights and is strongly built on court decisions....more

Amazon’s Inability To Register Domain Name .Amazon Is An Interesting Case Study For New gTLDs

Do you want your company to control .app or .restaurant? Applying to operate a generic top-level domain (gTLD) isn’t for the faint of heart. Although several hundred companies ponied up the $185,000 application fee for over...more

Is .XYZ The Next .COM? You Might Be Surprised.

Most of our readers are now familiar with ICANN’s new generic top-level domain (gTLD) program, which saw over 1,900 applications from various entities seeking to operate new top-level domain name registries. ...more

Intellectual Property Bulletin - Spring 2014

Right of Publicity? First, Let Me Take a Selfie - “Oh, he wants to do a selfie,” President Barack Obama observed with amusement before gamely posing with Boston Red Sox designated hitter David Ortiz. Ortiz snapped the...more

The GPMemorandum, Issue 180

In This Issue: - Franchisor Uses Uniform Domain-Name Dispute-Resolution Policy To Obtain Control Over Infringing Domain: A franchisor whose trademark was being infringed in a domain name recently obtained...more

Lawyer Limelight: Shawn Gunnarson

Internet governance is back in the news these days, as the U.S. Commerce Department takes steps to relinquish its largely symbolic role in managing the infrastructure of the World Wide Web. Wait. You hadn't heard? We're not...more

YourBrand.sucks: Trademark Protection and the New gTLD Designations

Little more than a predatory shakedown scheme” to “enrich the domain name industry rather than benefit the broader community of Internet users.” That was how West Virginia Senator John Rockefeller described the potential...more

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

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

New Domain Name ".solar" is Now Available

As many of you know, all businesses worldwide are facing the opportunities and perils of a vast expansion of internet domain names. The Solar Industry is on the front row of this new domain name game with a generic top-level...more

New '.uk' Domain Names to be Introduced

Nominet, the company that manages the UK domain space, will shortly be introducing .uk domain names. This means that from 10 June 2014 shorter domain names such as will be available for the first time, alongside...more

Here Comes the Sun: Many gTLD Sunrise Periods Now Open

The modern era of general Top-Level Domains (gTLDs) is here. The last several years of discussion, negotiation, public comment, lobbying, applications, and objections have finally led to delegation of the first new gTLDs in...more

Report on the Initial gTLD Launch: Taking a Ride with .BIKE

Despite the attempts of Reed Smith and some others in the intellectual property field to educate the public on the upcoming explosion in the number of global top-level domains (“gTLDs”) (the string to the right of the dot,...more

Recent Ruling May Put Dent In Ability of Government to Seize Domain Names

A November 2013 ruling from the United States District Court in a bankruptcy case may create an obstacle for a tactic increasingly popular among federal prosecutors – the seizure of a defendant company’s domain name....more

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

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

Internet Expands as New Top Level Domains Go Live; Trademark Clearinghouse Protections Triggered

The Internet continues to expand, as the rollout of new Generic Top Level Domains (“gTLDs”) by the Internet Corporation for Assigned Names and Numbers (“ICANN”) continues. Now is a good time to make sure that your brand...more

The Dot.Com World is About to Explode: BB&K's G. Henry Welles Examines the Legal Implications of The Roll Out of New Generic...

The dot.com world is about to explode. The number of Internet domain names will significantly increase over the next few years with the roll out of new generic top-level domains, known as gTLDs for short. These will change...more

A Domain Name is Property. A Domain Name is Not Property.

Business people are sometimes seen to roll their eyes when they ask their lawyer a straighforward question, and the lawyer pauses and replies “Well… it depends…” In our earlier post, we reviewed the Canadian decision...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

Registering Your Trademark with the Trademark Clearinghouse – Is Your House in Order?

“It’s happening – the biggest change to the Internet since its inception” is how the president of ICANN’s Generic Domains Division has described the new gTLD Program being implemented by The Internet Corporation for Assigned...more

The New gTLD Program: Latest Updates on Brand Protection and the Trademark Clearinghouse

The most significant development in the Internet space in recent years is the ongoing generic top-level domain (gTLD) expansion. (As a reminder, a TLD is what appears to the right of the “dot” in a domain name (i.e., .COM,...more

CRS Report To Congress On Internet Governance

On November 13, 2013, the Congressional Research Service ("CRS") issued a report to Congress entitled "Internet Governance and the Domain Name System: Issues for Congress." The focus of the report is the United States'...more

ICE Seizes Counterfeit Domain Names

On December 2, U.S. Immigration and Custom Enforcement's (ICE) Homeland Security Investigations announced in a press release that 706 domain names set up to “dupe” consumers into buying counterfeit goods had been seized by...more

The Katten Kattwalk - Fashion Week 2013

In this issue: - New Rules on Use of Child Models - Impact of TTAB Rulings on Court Decisions - Sports Teams’ Logos and Marks May Be Different - It’s Ten O’Clock—Do You Know Where Your Company’s...more

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