Domain Names

December 20, 2013 9:57 AM | Posted by Olafson, Shane | Permalink

In most U.S. states, merely using a trademark confers trademark rights to the owner.  As such, many companies question why they should spend time and money registering their trademarks with the United States Patent and Trademark Office (PTO).  There are many reasons to register a mark, but one of the most important reasons was recently highlighted in a case from the First Circuit Court of Appeals (the federal appellate court whose rulings cover Massachusetts, Rhode Island, Maine, New Hampshire and Puerto Rico).  That case is Dorpan, S.L. v. Hotel Melia, Inc., 728 F.3d 55 (1st Cir. 2013).   

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December 12, 2013 4:43 PM | Posted by Olafson, Shane | Permalink

On December 4, 2013, in Petroliam Nasional Berhad (Petronas) v., Inc., the United States Court of Appeals for the Ninth Circuit held that the Anticybersquatting Consumer Protection Act (“ACPA”) does not provide a cause of action for contributory cybersquatting.

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March 28, 2013 4:28 PM | Posted by Aikman-Scalese, Anne | Permalink
Complaints regarding inadequate protection for trademark owners will apparently not stop the Internet Corporation for Assigned Names and Numbers ("ICANN") from launching its new unlimited gTLD (generic Top Level Domain) program as quickly as possible in 2013. The new web environment will include hundreds of different words appearing to the right of the dot in domain names, in sharp contrast to the existing limited number of authorized strings such as .com, .biz, .net, and .info. Initial evaluations of over 1900 applications for new Top Level Domains have begun to be published by ICANN and will continue through August. Strings containing non-Latin script, known as Internationalized Domain Names ("IDNs"), of which there are over 100 in Chinese, Arabic and other alphabets, will launch first in May or June. read more
November 29, 2012 3:53 PM | Posted by Aikman-Scalese, Anne | Permalink
This year the Internet Corporation for Assigned Names and Numbers ("ICANN") received over 1900 applications for new generic Top Level Domains ("gTLDs").  (A Top Level Domain refers to the string of letters to the right of the "dot" such as dot com, dot net, or dot info.)  Currently there are 22 of these as well as over two hundred country code domains, e.g. (dot)us.  As part of this effort to launch an unlimited number of new gTLDs, ICANN had put in place a procedure whereby governments who are members of its Government Advisory Committee (the "GAC") could issue an "Early Warning" as to any new gTLDs they oppose or feel should have conditions attached before launching. read more
October 24, 2012 9:48 AM | Posted by Bayton, Emily | Permalink
Today we bring you Part Two of an article authored by our partner Ms. Emily Bayton and published by Law360 on October 16, 2012.  You can check out Part One of the article here: read more
October 16, 2012 8:22 PM | Posted by Bayton, Emily | Permalink
As an intellectual property lawyer and avid sports fan, I’m always interested in a case involving the legal intersection between sports and IP. There are plenty of IP issues facing the sports industry. Like any other industry, it’s driven by money, much of which is generated from IP. From licensing of team names and logos, to broadcast and sponsorship rights, to merchandise deals, IP plays a large role in the value of the sports industry.

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June 27, 2011 4:20 PM | Posted by Campbell, Flavia | Permalink
The Internet Committee for Assigned Names and Numbers (ICANN) has approved the launch of the new .XXX top-level domain name (“TLD”), targeted to serve the needs of the adult entertainment industry. As we've seen in the past, the launch of new TLDs may give cybersquatters the opportunity to register domain names that incorporate famous marks to later profit from selling them to their rightful owners. The risk of brand damage caused by such cybersquatting activities is enhanced in this case by the fact that the .XXX TLDs are, by definition, associated with sexually-oriented content. Sensitive to the issue, the registry behind the .XXX TLD is giving trademark owners outside the adult industry the opportunity to preemptively block their marks from being registered within a .XXX web address. read more
June 24, 2011 5:37 PM | Posted by Aikman-Scalese, Anne | Permalink
Brand owners need to be aware that the complex world of Internet domain name registrations is about to get more confusing. On Monday, June 20, the Internet Corporation for Assigned Names and Numbers (“ICANN”) approved taking applications for an unlimited number of generic Top Level (after the dot) Domains. Qualified registrars may apply for any string of letters after the dot, e.g. (dot)realestate, (dot)casinos, (dot)sports, (dot)toys, (dot)music, or (dot)movies. The new “gTLDs” are expected to increase competition and foster free speech, but they also present a much more difficult trademark enforcement environment as brand owners struggle to ferret out and shut down unauthorized use of their marks and sales of counterfeit goods and services on the web. read more
February 10, 2011 3:40 PM | Posted by Edwards, Nathaniel | Permalink

The Pac-10 Conference will add the University of Colorado and the University of Utah to its league next fall and will subsequently undergo a rebranding from the PAC-10 to the PAC-12. Whether rebranding or launching a new brand, one important consideration should be whether the domain names you want to use for your brand are available. The Pac-10 just found out that PAC12.COM - likely the most vital domain name for the launch of the Pac-10’s new brand - is registered to someone else.  

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January 26, 2011 3:11 PM | Posted by Norcross, Linda M. | Permalink
Innovation is a common buzzword these days, as companies search for new and unique ways to distinguish themselves and even turn a profit. How do companies large and small stand out among their competitors in today’s economy? How does a company turn an idea into a billion dollar intellectual asset, which ultimately strengthens its balance sheet and/or attractiveness to potential investors or purchasers? One way is to better understand how to build a solid brand identity that stands out and outlasts the others. When brand clearance and management is an afterthought that follows instead of intersects with the creative process, companies fail to take full advantage of the value of that brand. Companies with an understanding and appreciation for all of the factors that go into building an effective, competitive branding campaign will reap the benefits of a brand identity that enjoys strength, longevity, a more significant impact on the marketplace, and a far greater return on the initial investment. read more
January 26, 2011 12:35 AM | Posted by Edwards, Nathaniel | Permalink

The Western District of Washington is allowing the Microsoft Corporation to move forward with claims for contributory cybersquatting under the Anti-Cybersquatting Protection Act (ACPA) and contributory dilution under the Lanham Act. In an order denying the defendants’ motion to dismiss Microsoft’s claims, the court stated that causes of action for contributory cybersquatting and contributory dilution had never been directly addressed by statute or appellate courts.

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December 15, 2010 12:03 PM | Posted by Garrison, Sean | Permalink
Last week, at its Board meeting in Cartegena, Columbia, the Internet Corporation for Assigned Names and Numbers (ICANN) was expected to approve the implementation of a process to increase the number of generic top level domains (i.e. .com, .net, .org., etc.) that could be made available for registration of domain names.  read more
October 19, 2010 7:52 PM | Posted by Olafson, Shane | Permalink
Intellectual property accounts for the majority of all property owned by modern corporations. Because of its value, liability for alleged infringement is a major risk facing businesses today. Companies of all sizes may encounter lawsuits for a variety of intellectual property disputes, including patent infringement, trademark or trade dress infringement, copyright infringement, trade secret misappropriation, unfair competition, and privacy violations, just to name a few. read more
October 6, 2010 11:05 AM | Posted by Williams, Nikkya | Permalink
Hard Rock Café International (USA), Inc. (HRCI), the owner of the HARD ROCK trademarks, has sued the owners and operators of the Hard Rock Hotel and Casino in Las Vegas (“HRH”) and the producers and distributors of the reality TV show “Rehab: Party at the Hard Rock” for trademark infringement, trademark dilution, breach of contract, unfair competition and a declaration that the licensing agreement under which the Hard Rock Hotel and Casino operates is terminated.
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July 29, 2010 3:14 PM | Posted by Williams, Nikkya | Permalink

Let’s say you have a website.  And on your website, you allow third-party users to post content, say, their home videos or fan fiction or random comments about whatever it is your website is about.  So one day, you’re sitting around managing your website (like you do) when you get served with court papers; you’ve just been sued for copyright infringement!  But what the copyright owner is suing you for is a copy that one of your third-party users posted to your website, not something that you posted to your website.  Are you left holding the bag or can you get out of this lawsuit?

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