News & Analysis as of

Domain Names

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

Google May Be A Verb, But Verb Use Alone Does Not Constitute Genericness

by Weintraub Tobin on

Just Google it. Can you Google the score? Have you Googled the restaurant’s reviews? These are all common phrases in today’s internet-reliant society, and it’s entirely due to the creation of Google and its widespread...more

Proposed change of registration policy for .IE domain names

by Hogan Lovells on

IEDR, the Irish Domain Registry, recently announced that it was a running a Public Consultation with a view to liberalising the .IE domain name registration policy....more

MarkIt to Market® | September 2017

The September 2017 issue of Sterne Kessler's MarkIt to Market® discusses consent agreements, positive developments in the European community, and lists the new gTLD Sunrise periods. Please see full newsletter below for...more

.CH leads the way in the battle against fraud

by Hogan Lovells on

SWITCH, the Registry responsible for the country code Top Level Domain (ccTLD) .CH, recently published an article on the subject of counterfeit goods and fraudulent websites hosted under the .CH ccTLD and the measures they...more

Your Voice Is Heard – Controversial Clause Deleted From China’s New Domain Name Rules

by Hogan Lovells on

On 24 August 2017, the Chinese Ministry of Industry and Information Technology (“MIIT“) issued the final version of the Rules on the Administration of Internet Domain Names (“New Domain Name Rules“). These new Rules will come...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

Life in the Lowercase Lane: Lessons for Trademark Owners About Genericide

Death by genericide is a painful way to go, for trademarks that is. When the public comes to think of a trademark as the common word for a product or service -- as opposed to identifying its exclusive source -- the trademark...more

SSAC gives the thumbs down to the use of emoji in domain names

by Hogan Lovells on

Emoji, the pictorial symbols typically presented in a colourful cartoon form, are nowadays being widely used on smartphones, in chat, in email applications and in social media. Their increasing popularity has prompted the...more

Domain Name Can Be Trademarked, Federal Court Holds

A new trademark decision that protects a mark that many in the industry thought was a generic term has made the headlines. Online hotel reservation service Booking.com sought to trademark its name for providing travel...more

MarkIt to Market® - August 2017

The August 2017 issue of Sterne Kessler's MarkIt to Market® discusses lessons for trademark owners about genericide, lists the new gTLD Sunrise periods, and upcoming speaking engagements. Please see full Newsletter below...more

UDRP Proceedings: Solving Domain Name Disputes

by Revision Legal on

If a dispute arises over use and/or registration of an internet domain name, resolution of the dispute is accomplished through proceedings under the Uniform Domain Name Dispute Resolution Policy, known as UDRP proceedings,...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

Summer's Here, Don't Get Burned!

In May of 2014, this newsletter discussed the prevalence of trademark and domain name scams, and offered tips on how to avoid being duped by fake service offerings (see "Scammers Still Be Scamming" here). Unfortunately,...more

Media Law Bulletin: Google: Everybody Does It Everywhere — But It’s Still Trademarked

by Sedgwick LLP on

The U.S. Court of Appeals for the Ninth Circuit recently held that the Google brand continues to enjoy trademark protection, notwithstanding that the word “google” has entered (maybe stormed) the popular lexicon to describe...more

MarkIt to Market® - July 2017

The July 2017 issue of Sterne Kessler's MarkIt to Market® discusses trademark and domain name scams and lists the new gTLD Sunrise periods. Please see full Newsletter below for more information....more

Who vs. What: 4 Steps to Prevent Your Trademark from Falling in the 'Genericide' Abyss

Recently the Ninth Circuit ruled that Google’s trademark for search engines has not become generic and is still enforceable as to search engines. As Bayer learned with its previously-existing trademark aspirin, when a court...more

Intellectual Property Primer for Startups

by Revision Legal on

Many startup companies do not realize that their intellectual property (IP) rights are often their most valuable asset. Few startups have portfolios of real property or vast quantities of retail inventory and other physical...more

Down, but not out – initial adverse decision not a bar to future recovery of .ca domain name

by Smart & Biggar on

A pair of recent decisions under the Canadian Internet Registration Authority (“CIRA”) Domain Name Dispute Resolution Policy (“CDRP”) demonstrate that a trademark owner who fails to obtain a domain name transfer at a first...more

Do You Even Trademark, Bro?

Two Bros are competing over their Bro meal delivery services. Jamie Giovinazzo is the owner of Eat Clean Bro, LLC, a meal delivery service providing “a convenient service that is designed to bring chef-prepared meals right...more

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

No Trademark Genericide: GOOGLE Is Not “a Google”

by McDermott Will & Emery on

The US Court of Appeals for the Ninth Circuit made a point to remind trademark litigants of the relevant laws and policies pertaining to trademark “genericide” when it sustained summary judgment in favor of ubiquitous search...more

Wait… “GOOGLE” is Not a Generic Word?

by Field Law on

Is Google a brand or just a word meaning “conduct an online search”? A trademark can suffer “genericide” when it becomes so commonly used that it transforms from a unique brand name into a generic word which is synonymous...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

Master of Your Domain – ACPA Damages Sought by Greg LeMond

by Dorsey & Whitney LLP on

You might want to think twice before registering a domain name containing a competitor’s personal name or trademark. Three-time Tour de France winner Greg LeMond put his “pedal to the metal” recently, suing two Minnesota...more

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