When Trademarks and Domain Names Collide

Posted by Angelica J. Simpson

April 6, 2015

Trademark-Symbol_32Branding your product has long been a protected area of American legal practice. However, in the fast changing age of the Internet, the ability for those to monitor and protect their trademark has become increasingly difficult. With multiple parties requesting the use of limited domain names, the legal rights to who controls these names becomes an issue. As the access to the Internet expands, along with the domain names available, the international community requests authority and structure to level the playing field of all countries involved.

The Madrid Protocol, adopted in 1989, and in operation since 2004, sought to address the original issue of international trademarks. The system provides a way to register trade marks internationally, by way of one application. With 91 members, including the United States, trademark holders with an existing trademark, can seek application to register their mark with thy system. This grants the trademark the protection afforded by the international registration in more than one jurisdiction. It is important to note that a valid trade mark in the United States, might not enjoy the same status abroad, and with the every changing law and technology things become more difficult to understand. Continue reading

WorldWideWar.com

Posted By:  Daniela Madrid

 

200px-RegisteredTM.svgWhat happens when an owner of a trademark wants to use his trademark as a domain name for his website but discovers that the domain name is already being used by a third party? There are several options to resolve this dilemma. The trademark owner can use an alternative domain name suffix, can file a dispute with ICANN, can file suit in court for trademark infringement or cybersquatting. Continue reading

New gTLDs, New Era, New Issues

 Posted by:  Florencia Todaro

 

dTLDAfter decades without many changes in gTLDs, INCANN announced the new era of internet, with the expansion of TLD; but when? Experts expected that this big deal is going to be this year, but apparently no.

At this moment there are 22 gTLDs for all the world (plus ccTLDs). The case is that the necessity of new TLD is a reality. The limitation that .com domains implies is a constant debate; is it possible to increase the TLD (top level domains) without creating confusion or increasing and facilitating cybersquatting? Continue reading

International Protection: Domain Disputes and Remedies

icann_logo_0Posted By: Joseph Citelli

Joseph Citelli
–>As more and more businesses shift their focus towards online commerce, there are bound to be disputes, facilitated by the very nature of the internet, that occur across international borders. While some disputes that can be brought within the jurisdiction of the Untied States can be resolved through the Anti-Cybersquatting Consumer Protection Act (ACPA), it is important for business owners to recognize that the ACPA and other United States laws may not be sufficient to hale international parties into a United States court. Therefore, in order to protect against international cybersquatting or trademark dilution, businesses should ensure that they are adequately protected under the Internet Corporation for Assigned Names and Numbers (ICANN) standards. Continue reading

The Future of Cybersquatting

Posted by: Zach Smith

 

234px-DomainNameSystemCybersquatting, or domain squatting, according to the Anticybersquatting Consumer Protection Act is the act of a bad faith intent to profit from the goodwill of another’s trademark, registers, traffics in, or uses a domain name that is identical to, or confusingly similar to distinctive mark. (Anitcybersquatting Act)  The idea is that certain domain names are indispensable to certain companies and if one were able to gain the rights to the domain name first, the company would have no choice but to purchase the domain name. Cybersquatting has become an interesting problem given the rising number of domain names on the Internet and the rise in demand.  However, according to Google executive Vinton Cerf, “we are at the cusp in the IP address space for internet.” (Vinton Cerf quote)  The question then becomes what happens to cybersquatting and the Internet when all the domain names are taken. Continue reading