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Archive for the 'Brand Protection' Category

September 19, 2019

The top level .AR domain names are now available for registration.

The .AR TLD is currently in a preference registration stage, meaning if you’ve registered domain names in the .com.ar, net.ar, int.ar or tur.ar TLDs, prior to 1st December 2015 you have until 9th of November 2019 to request the registration of the .AR equivalent domain names before the TLD goes into general public availability.

At the end of the preference registration stage, if only one request is received for the domain name, the domain will be registered to that applicant. If multiple applications are received, the priority to register the domain will be resolved through a raffle made by the City of Buenos Aires Lottery. Safenames will inform any customers if this is the case with their particular application(s).

With more than 500,000 registrations currently in place, we believe Argentinian domains still prove to be very popular. We would highly recommend any clients operating under com.ar, net.ar, int.ar or tur.ar proceed with the application of the equivalent .AR domain name within the preference registration stage, helping to prevent any cybersquatting whilst also enhancing user experience through the use of a shorter domain name.

Act now, contact your Safenames account manager:
UK: +44 (0)1908 200022 | US: +1.703.574.5313
and minimise the potential of brand abuse.

This year marks the 20th anniversary of the Uniform Domain Name Dispute Resolution Policy (the UDRP), a mechanism that sets out the legal framework for resolving domain name disputes in generic top-level domains (gTLDs) (e.g., .com, .net, .org, .biz), as well as a limited number of country-code top-level domains (ccTLDs) (e.g., .cc, .co, .me).

To commemorate the 20th anniversary of the UDRP, WIPO will be hosting a conference at its headquarters in Geneva, Switzerland on Monday, October 21, 2019. The event will discuss relevant internet developments, UDRP jurisprudence, and look ahead to the future of the UDRP and its ability to address evolving bad faith registrations.

The event also provides an opportunity for brand owners, trademark practitioners, party counsel, academics, registrars, ccTLD administrators, and other domain name and Internet stakeholders to meet and discuss the challenges they face.

We welcome the chance to celebrate the success of the UDRP and look forward to meeting you there!


As one of the top-ranking filers of domain name disputes, Safenames specialises in all dispute resolution policies including the UDRP. Since 1999, Safenames has filed over 200 cases and recovered over 500 domain names through the UDRP alone.

Introducing AdultBlock+, the new domain name blocking service from ICM Registry – a mechanism which allows customers to block trademark labels across all four of the adult-themed TLDs – .adult .porn .sex and .xxx

AdultBlock+ Features

  • Block trademark labels across all 4 TLDs (.adult, .sex, .porn, .xxx)
  • Block premium domain names
  • Block variant Labels in your SMD File and Sunrise B .xxx names.
  • Block Unicode variant names – homographic protection in 24 languages (e.g. Bank, BÄΝΚ, ßank)

AdultBlock+ Benefits

  • Protects your brand from abuse and cybersquatting
  • Covers available names and future registrations will be automatically blocked
  • Cost effective brand protection, blocks look-alike variations similar to the trademark term
  • Saves you money – block across all four extensions at an economical price

Register your block today

AdultBlock+ protects your brand in this fast-changing space

To learn more, call:
UK: +44 (0)1908 200022 | US: +1.703.574.5313
Email: [email protected]

The Chinese Domain Name Dispute Resolution Policy (‘CNDRP’) is an efficient procedure for resolving ‘.CN’ domain name disputes. Even though the CNDRP is based on the Uniform Domain Name Dispute Resolution Policy (‘UDRP’) model, this Policy has special regulations.

To dispute a domain name under the CNDRP, the domain name at issue has to be no older than two years. Article 2 of the CNDRP specifically states that “the Dispute Resolution Service Providers do not accept the Complaint regarding domain names with registration term[s] of over TWO years”.

This time bar is specific to the Chinese Policy and is based on the General Civil Law Rules of People’s Republic of China. However, in 2017, the time bar for general civil claims was extended from two to three years. In line with this change, the China Internet Network Information Centre (‘CNNIC’) issued an amended CNDRP for consultation.

Among those changes, the amended CNDRP proposed to extend the time bar from two to three years. Following the end of the consultation period in early June 2019, the CNNIC has now implemented these changes. As of 18th June 2019, the time bar has been raised to three years.

Brand owners are now able to file ‘.CN’ complaints for domain names which are up to three years old. However, the amended Policy makes no mention as to whether this applies to all domain names, or is only reserved for domain names registered after the changes came into effect.

If this new time bar has a retrospective effect, brand owners may be able to file complaints previously barred under the two-year time bar.

Previously, brand owners could file a complaint for domain names older than two years, if the trademark owner could prove that a change of ownership occurred within two years prior to filing the dispute. Still, this new time bar gives brand owners more flexibility for filing ‘.CN’ domain names disputes.

Brand owners can now reopen previous cases involving ‘.CN’ domain names, and reassess whether they are still barred from filing a dispute with the relevant dispute provider.

Author – Caroline Valle

Article by Micah Ogilvie

The recent case of Pret A Manger Limited v. Jack Tang; D2018-2059 (concerning the domain name “pret.app”) highlighted the importance of credibility under the Uniform Domain Name Dispute Resolution Policy (UDRP). Whilst the courts are better equipped to evaluate the Parties’ credibility in a dispute, much can be ascertained from the Parties’ submissions as regards their background, intentions and motive.

In the above case, the Complainant was the international sandwich shop commonly referred to as “Pret” which operates over 500 stores world-wide. The Complainant holds approximately 480 trademarks which incorporate the term PRET and in December 2017 the Complainant launched an app for smartphones and tablets in the United States of America (“United States”).

The Respondent referred to himself as an “Internet entrepreneur”, who claimed that he registered the domain name to launch a French website to help students in France find work opportunities.

As the burden of proof rests with the Complaining party, they have considerable control over how the Respondent will be perceived in a UDRP dispute. He has the task of demonstrating to a panel that the Respondent possesses the prototypical characteristics found in a “Cybersquatter”, namely, that his intentions were to take unfair advantage of Complainant’s trademark, and the driving force behind such actions was financial or otherwise.

Against a defaulting Respondent, the effects can be damaging, leading to the loss of his domain name and the label of “Cybersquatter”. In the event the Respondent decides to defend himself, he has the task of vindicating his name, demonstrating to the Panel that the Complainant’s allegations are false/ misplaced, or that he, in fact, does have a right or legitimate interest in the disputed domain name.

The Panel then has to decide the case on the merits of both Parties arguments and which presentation of the facts it believes to be more credible.

In cases where the evidence against the Respondent is overwhelming, it would be difficult for a Respondent to defend against the Complainant’s arguments (in these cases it is less likely a Respondent would submit a response), but where the facts are less clear, credibility can play a vital role in determining legitimate interest and bad faith. In such cases, the UDRP becomes a balancing act, whereby inferences can be drawn which tip the scale in favour of one of the Parties.

The Panel in Pret had such a decision to make. Even after the submission of both arguments the case was finely balanced. The Panel then directed its attention to the Respondent, stating:

“Much therefore hinges on the general credibility of the Respondent.”

In other words, the Panel had to decide whether the Complainant had done enough to establish the Respondent as a “Cybersquatter”, or is the image portrayed by the Respondent to be believed?

The Panel examined the various articles produced by the Respondent which showed his entrepreneurial acumen in previous ventures and found:

“Taken together, these various articles appear to project the image the Respondent has claimed, namely of an Internet entrepreneur who has launched a successful student job search website, followed by a successful visiting massage website, both of which have been profitable and, in the latter instance, has raised millions of Euros in venture capital.

The Respondent now seeks to repeat the success of the student job search venture, or similar, but in France, and with an app for the purpose. The credibility of his choice of France is supported by his demonstrated business presence in France through Urban Massage France SARL, of which he is a director.

On the totality of the evidence, and on balance, the Panel finds no reason to doubt the credibility of the Respondent or to doubt his explanation of the registration of the disputed domain name as having been for the purpose of an app for his French student job search venture.”

It is no coincidence that a finding of legitimate interest on the part of the Respondent often translates to a Panel finding no evidence of bad faith registration or/and use. This is because Complainant’s insufficient evidence leaves a significant lacuna where the benefit of the doubt tends to favour Respondent. This is true even in cases where a higher standard exists for high volume registrants. For example, a search conducted on the website www.udrpsearch.com reveals that the online media company, Name Administration (BVI) have been involved in upwards of 50 domain disputes, with success in all but one.

These numbers demonstrate that high volume registrant + high volume disputes do not automatically mean that the Respondent is bound to lose its domain name in all cases. In fact, Respondent’s such as Name Administration (along with carefully selected legal representation), have made the most out of their unfortunate circumstances to build up a level of credibility in UDRP cases. The numerous cases filed against Name Administration have led to it becoming well-known among UDRP panels who have come to accept the company’s legitimate business structure.

Credibility in UDRP disputes can also work the other way, with a Complainant’s credibility being called into question when confronted with a request for Reverse Domain Name Hijacking (RDNH).

Factors which can affect a Complainant’s credibility in UDRP disputes include:

  • Providing misleading or incomplete information to the Panel (see; Tupelo Honey Hospitality Corporation v. Ritchie Taylor; Claim No. FA1705001732247), finding “The Panel finds that Complainant knew or should have known that it was unable to prove that Respondent registered the disputed domain name in bad faith.”)
  • Utilizing counsel who ‘should know better’ (see; Pet Life LLC v. ROBERT RIESS / blue streak marketing llc; Claim Number: FA1810001810870, finding; “Given PET LIFE’s trademark registration date and first use in commerce date being years after Respondent’s registration of <petlife.com>, Complainant –who is represented by competent counsel– knew or should have known at the time it filed the instant complaint that it would be unable to prove each of the three elements of Policy ¶ 4(a) necessary to prevail.”)
  • The manner and motive in which a complaint is filed i.e. following a failed acquisition (see; Bernina International AG v. Domain Administration (BVI) Case No. D2016-1811, finding; “In the Panel’s view, this is a classic “Plan B” case, i.e., using the Policy after failing in the marketplace to acquire the disputed domain name. This stratagem has been described in several earlier UDRP cases as “a highly improper purpose” and it has contributed to findings of RDNH”).

A trademark owner who is considering filing a UDRP complaint should not dismiss the role of credibility in its case. Trademark owners should file complaints confident that they have provided enough evidence to satisfy their burden. For example, although the second element only requires a Complainant to make out a prima facie case, more time should be spent on trying to anticipate the Respondent’s reply to ensure there are no surprises. The use of a pre-action enforcement notice to the registrant not only allows for possible resolution but also an insight into the merits of a registrant’s possible arguments.

Copyright is known to protect original works such as literary, dramatic, musical, artistic and other intellectual works. When a person creates original work, it is automatically copyrighted at the time of its creation. Copyright gives one an exclusive right to do or authorise another person to use, reproduce and distribute copies, perform or communicate in public, certain kinds of creative works. Copyright lasts, on average, 50 years after the death of its author for most creative works.

For a work to enjoy copyright protection, the creation must be both original and tangible. A simple idea in someone’s mind is not sufficient to give protection under copyright, as the idea must be expressed in a physical form.

In contrast, trademark is a mark, when used in trade, capable of being represented graphically, and which distinguishes the goods and services of one person from that of another. The coverage of a trademark is broader than copyright, as a name, symbol, word, sign, shape of a product, colour, sound or smell can be protected under trademark law.

The main requirement for a mark to be protected is to be distinctive and not generic in relation to the business for which it is used.

However, the question here is to know if brand logos can be protected under copyright or trademark. Logos are a complex matter, and the simple answer is that they can be protected both under trademark and copyright law.

In order for a logo to have copyright protection, it requires a sufficient level of creativity. As copyright cannot protect words, colours or simple logo designs, most simple logos do not have the required level of creativity and originality to be copyrightable.
Nevertheless, some artistic logos can qualify for copyright protection if it is considered as a piece of artwork, and separate from its use as a corporate identifier. In such cases, those logos can and are enforced using both trademark and copyright.

As an example, in the United States, the Digital Millennium Copyright Act (“DMCA”) gives the opportunity for copyright holders to enforce their right and send notices to remove any content containing copyrighted works from websites or social media pages. However, as there may be some confusion between copyright and trademark protection for logos, companies must be careful when relying on the provisions of the DMCA.

In the case CrossFit, Inc. v. Alvies, No. 13-3771, 2014 WL 251760 (N.D. Cal. Jan. 22, 2014), the Defendant, Jenni Alvies, launched a blog and created a Facebook page called “CrossFit Mamas”, where she posted exercise routines. The fact that Alvies used the term “CrossFit” came to the attention of the company CrossFit Inc. In order to stop Alvies using this name, the company sent a takedown notice to Facebook pursuant to the DMCA, requesting a takedown of her Facebook page. Later, CrossFit Inc. sued Alvies for trademark infringement, but Alvies counterclaimed, arguing that the company violated paragraph 512(f) of the DMCA. This provision provides that:

“Any person who knowingly materially misrepresents under [17 U.S.C. § 512] that material or activity is infringing (…) shall be liable for any damages, including costs and attorneys’ fees, incurred by the alleged infringer (…) who is injured by such misrepresentation, as the result of the service provider relying upon such misrepresentation in removing or disabling access to the material or activity claimed to be infringing.”

In other words, this section held that any person who sends a notice of claimed infringement with knowledge that such claims are false might be liable for damages. In the CrossFit case, the company sent the DMCA takedown notice asserting infringement of its trademark rights rather than its copyright. The Court held that Alvies suffered damage when the content was removed via an improper DMCA takedown notice and agreed that such notice, used for a trademark matter, may violate paragraph 512(f).

The conclusion here is that a DMCA takedown notice, whether used for shutting down websites or social media pages, should be used carefully and only to address copyright violations. As many logos do not have the level of creativity required to be copyrightable, brand owners cannot rely on the DMCA provisions if a person only uses a company’s name logo without authorisation.

The use of a company’s logo by a third party, however, gives legal protection under trademark law and brand owners can enforce those trademark rights. Social media platforms, such as Facebook, also have specific procedures to report trademark infringements. Ideally, the best strategy for companies is to seek protection of their unique brand logos under both laws and obtain trademark rights as well as copyrights.

Author – Caroline Valle
Safenames Legal

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