trademarks

An Initial Call for a More Enhanced UDRP

Since its launch on December 1, 1999, the Uniform Domain-Name Dispute-Resolution Policy (“UDRP”) has been an effective tool to quickly remove domain names which infringe upon the trademark rights of others on the Internet. The Internet has changed dramatically since 1999, but the UDRP has remained the same and has not adapted to address the significant dangers associated with malware, phishing and spear attacks perpetrated by cybersquatters.

The gTLD Trademark Clearinghouse. Docket Clerks Rejoice!

New gTLDs should come online in late 2013, and late last month ICANN released two papers for comment that will help flesh out how trademark owners can protect their rights in this new environment.

After reviewing these documents, it is clear that companies will need to be vigilant about maintaining a presence in the trademark clearinghouse, but they will also need to expand monitoring of the gTLD space to compensate for limitations in what the clearinghouse can accomplish.

The Rules are Clarified For Those Purchasing a Competitor’s Trademark as a Keyword in Google AdWords and Bing adCenter

In the Network Automation v. Adv. Sys. Concepts case, Plaintiff purchased a trademark owned by Defendant, its direct competitor, as a search engine keyword on both Google and Bing search engines. As a result, when users entered Defendant’s trademark as a search query, Plaintiff’s website appeared as a sponsored link above or next to the organic search results. When Defendant objected, Plaintiff sought a declaratory judgment of non-infringement in the Central District of California and Defendant counterclaimed alleging infringement. 

Advertisers Free to Use Competitors’ Trademarks as Keywords without Objection from Search Engines

Most search engine Terms and Conditions prohibit intellectual property infringement by those seeking to advertise on the search sites. However, advertisers alone choose the keywords they want to generate advertisements and the text that they choose to use in those advertisements, typically without review by the search engine. 

WIPO Extinguishes Firestore.com’s Request to Transfer Hot Domain Names

In a decision published on January 27, 2011, WIPO Panelist, Richard G Lyon (“Lyon”), denied Witmer Public Safety Group, Inc.’s (“Witmer”) UDRP Complaint against JTRE LLC (“JTRE”). Witmer, the owner of a federal trademark registration for THEFIRESTORE.COM (Stylized), filed the UDRP Complaint against JTRE over 34 domain names registered by JTRE which incorporate the term “firestore” along with a state name or its commonly known abbreviation. For Witmer to win its UDRP action it needed to prove: 1) the domain names were ident

Microsoft Brings a Big Stick to the Battle Against Cybersquatting

Cybersquatting is illegal under federal trademark law, as it has been since 1999. The practice, which even sounds revolting, consists of the bad faith exploitation of legitimate, distinctive trademarks by registering, trafficking in, or using domain names that are confusingly similar to them. Violators often commit what has been called “typosquatting,” which is creating a website URL that differs from a legitimate one only by a character or two (for example, wilipedia.org for wikipedia.org). The cybersquatter may do this for a variety of reasons: hoping

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