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Tag: digital brand enforcement

It’s A Happy Ever After Ending For Disney’s Domain Dispute

Domain names are invaluable digital assets in todays world. Over the last few months, dotNice have been following the epic saga between Lucasfilm (now owned by Disney) and an established online retailer of fancy dress attire, Abscissa. The story begins over a decade ago when Abscissa registered various domain names including starwars.co.uk to attract online consumers searching for star wars paraphernalia and product goods to it’s webpage. Over the course of ten years, the online retailer used the domain to sell Star Wars related fancy dress attire. The common term given to such behaviour is domain-squatting or cyber-squatting which describes the act of registering or trafficking in a web address with bad faith intent to profit from another party’s trademark. Over the course of July this year, Lucasfilm (Disney) litigators pursued Abscissa to enforce their IP rights and were successful in their endeavours. Following the ruling of Nominet (the UK’s domain name registry) six different domain names, originally registered by the third party, were recovered by Disney and added to their existing portfolio of digital assets. Domain disputes like the debacle are in no way a recent phenomenon.

Following countless cases of online ip infringement, WIPO (World Intellectual Property Organisation) established an arbitration system in 1999 allowing trademark owners to file cases against alleged cybersquatters and thus, enforce their IP rights online.

So what actually constitutes domain infringement?

Although a domain name can easily be registered at a relatively minimal cost today, the terms of what constitutes infringement or intellectual property violation can be a little more complicated.
In order to successfully recover a domain name from a third party, the following conditions must clearly proven:

1. the complainant must have a trademark registered (related to the domain in question).

2. the defendant’s registration must be deemed as ‘abusive’ of the complainants rights or infringe on it’s proven intellectual property. In other words, it must be proven that the defendant registered the domain in bad faith for the purpose of leveraging another trademark owners brand equity.

What can brands do to prevent such cases of cyber-squatting?

– ensure you have your marks registered in all countries you operate in internationally

– Invest in building your domain name portfolio to avoid opportunistic domain squatters registering domains similar to your brand

– monitor keywords related to your brand and domain names to ensure you are aware of any dubious domain registrations

– Take swift action once infringement or ip violation has been identified.

Disney’s determined enforcement of their intellectual property rights should be emulated by all brands with an online presence. Failing to establish an effect digital brand protection strategy will ultimately negatively impact on a businesses bottom line.

dotNice – experts in digital brand protection
For more information email: brandprotection-emea@dotnice.com

Is This The End of Proxy Registrations for Domain Owners?

Over the past few weeks ICANN has caused quite a stir to businesses and trademark owners alike after announcing it was considering a proposal to force commercial registrants’ to display their identity when registering new domains.
This new proposal would see an end to commercial domain registrants’ ability to shield and hide their identity and rendering their registration details accessible on WHOIS platforms. It comes as no surprise that privacy campaigners are angered by the proposal.

ICANN released the ‘Initial Report on the Privacy & Proxy Services Accreditation Issues Policy Development Process’ on the 5th May, to allow for public comment on some of the points addressed. Some of the key questions raised in the report asked whether or not commercial entities registering domain names for economic and financial purposes should be exempt from privacy rights. Further questions examined what measures and policies would be required to enforce the contactability of the registrants. Furthermore, the report also asked to what extent should full WHOIS reference details be disclosed? The time frame for public comment ended on the 7th of July and at present we are waiting for press release on the report’s findings.

It comes as no surprise that many trademark owners are perturbed by ICANN controversial proposal. The digital landscape is fraught with potential threats to both personal and professional security. Many businesses enforce a policy of proxy registrations as an integral part of their brand protection strategy. The Online Abuse Prevention Initiative, a collective of activists for civil rights and internet anonymity, contend that the proposal would benefit and encourage cyber-criminals, online harassers and internet stalkers allowing them access to the personal details of women and LGTBQ campaigners. They argue it would deprive domain owners of their privacy and security. This type of activity, known as doxing allows confidential data of internet users to be exposed on the web.

Not all enterprises are put off by ICANN’s proposal. Naturally enough, the US entertainment industry is a strong supporter of the proposal as access to registration data will allow them to pursue copyright and trademark infringers with greater efficiency and cost-effectiveness. It would save the industry millions in legal enforcement. For the moment we will have to wait and see what decision ICANN will reach on this matter. Stay tuned for more updates.

dotNice International Limited – experts in digital brand protection
For more information email: brandprotection-emea@dotnice.com

Digital Brand Protection in the Latin American Market

 

We were delighted to speak with Salvador Camacho – Attorney in the Social Welfare department of the Mexican Department of Social Security (IMSS). Salvador also has worked for one of the top Intellectual property firms in Mexico – Arochi & Lindner, specializing in IP Enforcement and protection and recovery of domain names for international clients before WIPO and NAF.

We asked him to discuss the topic of digital brand protection in the LATAM market.

 

Why is digital brand protection important in your professional opinion?

Digital brand protection nowadays is essential in order to develop a strong presence in the Digital Environment. Trademark owners are the principal victims of unlawful online activity regarding domain names such as cybersquatting, typosquatting and new illegal online conduct such as soundsquatting. This situation is not only affecting brands, but also users are nowadays victims of illegal conduct like malware or phishing.

In this context, a digital brand protection strategy not only protects trademarks owners but also their customers.

 

As an Intellectual Property specialist, what top tips would you give to trademark owners in the LATAM market on protecting their digital assets?

For different reasons, the LATAM market has been lagging behind in regard to the protection of digital assets. Nevertheless, intellectual property infringers have been developing an interesting and valuable market around those unprotected assets for years. In this context, the top tips that I would give are the following:

  • Search for professional advice in order to have a better understanding of the value of your digital assets and their subsequent protection.
  • Protect your trademark in every country that you are planning to offer your product or service.
  • Register gTLDs, ccTLDs and IDNs for your brand even before submitting the application for the trademark.
  • Have a strong presence on Social Media. This works not only to avoid fake profiles and bad reputation, but also presents excellent branding opportunities.
  • Be aware of the new gTLD’s launching. It is important to register your trademark as domain name before someone gets in there before you.

 

What common or frequent mistakes do you regularly see trademark owners making in the LATAM market?

The trademarks owners in LATAM are very interested in protecting their intangible assets before the Intellectual Property Governmental Authorities and that is truly important, but they are completely forgetting the Digital Environment. They are registering their trademarks in several countries but only registering one domain name, generally the .COM gTLD. In my experience, this is the biggest mistake from trademark owners in LATAM market regarding digital brand protection.

This situation has generated the proliferation of cybersquatted domain names on ccTLD strings. Therefore, when trademark owners seek to register their trademarks as domain names on ccTLD endings for digital branding purposes, they discover that somebody else has already registered it and is asking a 6 figure number for the domain. There are enforcement methods to recover the domain name, but they are more expensive than defensively registering a domain name. A proactive approach is a more cost-effective option.

 

What is your opinion of ICANN’s new gTLD program? Should it be viewed as a positive opportunity for scaling businesses who missed out on the .com era due to timing?

In 1974, the French writer Jacques Bergier gave some predictions of the future of telecommunications in his book named “The Planet of Impossible Possibilities”. I will quote him and say that ICANN’s new gTLD program is “The Planet of Infinite Possibilities” because it will change the way that we know, understand and use Internet.

This initiative definitively will affect the LATAM market, specifically for trademark owners, who believe that having just one domain name will suffice. According to SEDO’s new gTLD awareness report published on 2014, 75% of internet users are unaware of the new extensions.

As in any unexplored market, this early stage is an interesting opportunity for scaling digital brands. With extensions such as .LAT (Available on Sunrise period until April 16th) precisely focused on LATAM market, the prompt registration of trademarks as domain names is crucial to have a strong digital brand presence in LATAM Digital Environment.

 

In terms of controversial gTLD’s like .SUCKS or .FAIL do you think they should be made available to the public?

Actually, only trademarks registrations for .SUCKS are available. The Consumer advocate subsidy goes from $10.00 USD per year but it will be available until September and you will be unable to host a website. The Standard registration will be available on Sunrise period for $249.00 USD per year.

The actual controversy is related to the Sunrise Premium registration of trademarks registered in ICANN’s TMCH. Trademark owners will have to pay $2,499.00 USD per year, so companies like Apple and Yahoo already have bought their respective .SUCKS domains, in order to protect their trademarks. Some trademark owners are calling this business model extortion disguised as registration, but others are appealing to the legitimate right to sell the gTLD at the desired price.

As freedom of speech is one of the pillars of the Internet, I believe they should be made available to the general public. Furthermore, WIPO’s UDRP decisions have granted legitimate interests to owners of sucks or gripe domain names over trademark rights.

Finally, everyone that has been publishing articles for the past few weeks about this controversial gTLD has reached the same conclusion as me: If you don’t want to be a TRADEMARK.SUCKS, then just deliver a good product or service and try not to suck.

 

 

dotNice – Experts in digital brand protection

For more information on domain names registration and management email – brandprotection-emea@dotnice.com

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