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Archive for the 'Domain Disputes' Category

On October 18, 2017, Safenames successfully recovered the domain name of a local fostering company which had been held for ransom by a notorious cybersquatter.

The Respondent, who was later exposed as WESLEY PERKINS of Birmingham UK in a recent article published by the Telegraph, found Mr Perkins to be behind numerous aliases and fake offshore companies that had been used to buy up the domains of many established businesses including ROLEX and ExxonMobil.

Littleacornsforstering.com was one such domain, which was inadvertanetly lost by its original owners who operated a fostering agency from the website. After rejecting Mr Perkins attempts to blackmail the fostering agency in to a sale and exhausting all other means, Safenames were instructed to file a UDRP complaint with the World Intellectual Property Organization.

Micah Ogilvie
Head of Legal

Micah Ogilvie is head of legal at Safenames Limited and manages the IP department. He has advised both global enterprise clients and smaller e-commerce and internet companies on brand protection, domain name dispute proceedings and cases of trademark infringement on the Internet. He has represented companies in more than 100 disputes through various international arbitration bodies, including the World Intellectual Property Organisation, the Czech Arbitration Court and the Hong Kong International Arbitration Centre. Safenames is a leading global domain name registration company that specialises in corporate domain portfolio management and online brand protection services.

Safenames were able to succesfully establish the fostering company’s legal right to the domain, despite having no registered trademarks at the time of dispute and an abusive pattern of conduct on the part of Mr Perkins.

The Panel in the case further held:
“The Panel would also add that it is unfortunate that the business practices of Mr. Perkins appear to have carried on for the most part unchecked for many years, notwithstanding the multiple findings made against him in UDRP proceedings and the brazen nature of his conduct. Particularly, concerning is that Mr. Perkins seems intent on taking advantage of the fact that frequently it will make more commercial sense for a victim of his cybersquatting activities to pay him monies to retrieve the Domain Name than to incur the legal fees and the cost associated with proceedings under the Policy.”

It is important to note that the domain industry is primarily made up of respectable investors, however the panel’s decision does beg the question of whether more can be done by national laws to criminalise the activities of serial cybersquatters. Conservative MP and chairman of the digital, culture and sport select committee, Damian Collins, has called for an “urgent review” to combat this level of extortion and offer more protection for British businesses.

Although brand management presents many challenges for brand owners, Micah Ogilvie, who is head of legal services at Safenames, believes brands can do more to protect themselves from unscrupulous domain investors who prey on their intellectual property.

“Although advertising budgets are often regarded as a necessity to help build a brands reputation, maintaining that reputation through a brand protection strategy is often overlooked. Budgets for brand protection are often minimal or non-existent and many brand owners adopt a reactive approach.

Brands need to understand that when it comes to protecting their most important assets, cheap is not always better. The cheapest domain registrars are not always the most secure, what is of more importantance is being able to pick up the phone and discuss any issues with a designated account manager that understands your portfolio and can notify and advise you appropriately. When a brand owners consolidate there domains into a single portfolio, this makes it easier for them to manage”

Protecting brands and marks online has been a complicated process since the introduction of new gTLDs. Fortunately, registries with large portfolios of TLDs, like Rightside, have begun offering the Domain Protected Marks List (DPML) service, to cover a mark on multiple domain extensions. Rightside’s own DPML covers all 40 of its TLDs, including highly relevant business verticals and concentrations, from .MORTGAGE and .SOFTWARE, to .SALE and .SOCIAL. This past April, Rightside launched an upgrade of DPML that has made the service more valuable than ever.

When DPML was first offered, it covered rightsholders’ exact-match trademark as recognized by the TMCH. Since then, domain squatters have begun taking advantage of the exact-match limitation by slightly altering trademarks in the names they register. To combat this, Rightside’s upgraded DPML offers subscribers the ability to create up to ten Variants of their mark that are covered by the same list. With the trademark and ten variants secured under all 40 new TLDs, each DPML subscription can protect up to 440 domain names.

In addition to Variants, DPML covers all domains in a list in over 200 supported IDN languages, and now includes coverage for Premium-tier domain names, as well. With such a broad blanket of protection, Rightside’s DPML now offers one of the most powerful tools for modern mark holders in a single, easy-to-manage package.

While DPML has made brand protection much easier, it now enables rightsholders to pivot from protection to true brand enhancement. With the upgraded DPML service, it is now possible to activate any domain protected in a list with no additional activation cost. This new feature is a very valuable option for any brand’s marketing or sales team. An activated domain can quickly be employed for a landing page, a campaign, or a Branded Short Link, and represents a real opportunity to generate value with domains that may have otherwise sat unused forever.

Whether the priority is protection or enhancement, DPML—especially in its new and improved form—gives mark holders added flexibility and confidence to tackle both current and future obstacles to successfully managing a trademark.

For more information or to purchase please reach out to your Safenames representative today or visit our DPML Page

Guest Blog by Rightside

Age.com recently posed the question in an article, “will Google Switch To .Google & .YouTube By The End Of The Year?” and we simply cannot wait to find out. While new gTLDs have already changed the domain name registration landscape, some (perhaps many) remain reluctant to register a .brand for their business—mainly for fear that not representing with a standard .com will somehow have a negative impact. But some large/global brands are shaking things up–Barclays recently launched the branded domain names .barclays and .barclaycard. According to Barclay’s news release, registering .brand domains “allows them to create a simplified online user experience, making it crystal clear to [their] customers that they are engaging with a genuine Barclays site.” There is also talk from some media sources that Google and its YouTube brand may register .brand domains in Q4 (.google and .youtube, respectively) this year with the launch of celebrity anchor sites (e.g. rockgod.youtube). If Google makes this move to the right (of the dot), it will be a game changer.

So why haven’t more companies made the move already? Let’s face it, even for global enterprises “new” can often be scary. Perhaps in light of Barclays recent move, and Google’s impending move, we can begin thinking of new gTLDs as “more” instead of “new”. More available domains, more opportunity, more targeted/relevant traffic, higher search rankings, etc. It has become incredibly difficult to find a short domain (because .com et al are saturated)—so ‘more’ gTLDs offer ‘new’ opportunities to be creative and once again register short, relevant domain names that aren’t already registered.

Registering a .brand domain allows you to lose the ambiguity and let potential customers know exactly who you are and what you do. Registering these domains is also a great way to brand and market your products and services. “Registering a .brand top level domain can make it clear to customers that they are visiting or purchasing from an authentic website (or, conversely, when they’re not). It can also offer a breadth of marketing opportunities for different products, services and campaigns—think run.nike, drive.bentley, and the like.”

For questions please contact Safenames in the UK at +44 1908 200022 (emeasales@safenames.net) or in the US at +1 703 574 5313 (nasales@safenames.net).

New “GEO” gTLD .OSAKA is now in TM Sunrise. Osaka is a designated city in the Kansai region of Japan and the capital city of Osaka Prefecture. It is also the largest component of the Keihanshin Metropolitan Area, the second largest metropolitan area in Japan and among the largest in the world with nearly 19 million inhabitants. Registering ‘geo’ domains is one of the best ways to enhance the credibility (reputation) of your business in specific areas/regions.

TM Sunrise for .OSAKA will remain open through March 11, 2015 and the remaining schedule is as follows:

  • Phase 2—Landursh :: Scheduled to open March 19, 2105 and remain open through March 31, 2015
  • Phase 3—General Availability :: Scheduled to open April 1, 2015.

For questions about this launch please contact Safenames in the UK at +44 1908 200022 (emeasales@safenames.net) or in the US at +1 703 574 5313 (nasales@safenames.net).

New gTLD .TIRES is now in TM Sunrise — this exclusive registration phase will remain open through March 21, 2015. The registry will not open a formal Landrush period, but the General Availability/Early Access Program (EAP) will open March 25, 2015. Registering additional domains (specifically new gTLDs) can help protect your brand(s) online within specific markets, and is one of the best way to optimize your naming strategy.

For questions about this launch please contact Safenames in the UK at +44 1908 200022 (emeasales@safenames.net) or in the US at +1 703 574 5313 (nasales@safenames.net).

New GEO gTLD .SYNDEY is now in TM Sunrise — this exclusive registration phase will remain open through February 3, 2015. The registry will run Landrush concurrently, but this phase will remain open through February 13, 2015. General Availability (GA) will open February 17, 2015. Sydney is the state capital of New South Wales and the most populous city in Australia and Oceania. Registering a .SYDNEY domain(s) enables companies doing business in this Australian region, or organizations serving the local community, to secure shorter and more relevant domain names for their web site(s).

For questions about this launch please contact Safenames in the UK at +44 1908 200022 (emeasales@safenames.net) or in the US at +1 703 574 5313 (nasales@safenames.net).

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