New gTLDs are disruptive to trademark protection, says WIPO
The World Intellectual Property Organization (WIPO) believes the roll-out of 1,400 new gTLDs will disrupt strategies for trademark protection on the web.
In an announcement on the expansion of the domain name space, the WIPO Director General said the proliferation of potential web addresses “will force trademark owners to adjust their priorities in terms of registration and protection choices”.
With the first new gTLDs having become operational, attention is now focusing on registrations in these domains. On March 14, 2014 the WIPO Arbitration and Mediation Center released the first decision on the application of the UDRP to a new domain.
UK to introduce ‘.uk’ domain names
Nominet, the company responsible for the .uk ccTLD, will introduce registrations at the 2nd level from 10 June 2014 – meaning that registrations of <brand.uk> will be available, alongside registrations such as <brand.co.uk> and <brand.org.uk>.
Existing registrations at the 3rd level will continue to function as normal. However, the owners of existing 3rd level registrations will be offered a right of first refusal over the equivalent 2nd level domain name, according to a specified order of priority.
The download from Durban: reflections on ICANN 47
See this Reed Smith report on the outcomes of ICANN 47.
Governments disagree on GI protection at TLD level
Despite strong lobbying from the US and Australian governments, the ICANN GAC has not removed its advisory ban on registration of geographical indications as top level domains, IP Watch reports.
Key topics to follow during ICANN 47
See this Katten alert for a good summary of key issues for the Durban meeting of ICANN 47, including both developments in the new generic top-level domain (gTLD) program and discussions of Internet policy processes.
GAC advises ICANN to reject .amazon gTLD bid
US online retailer Amazon’s quest for their own top level domain, .amazon, might be doomed after the Governmental Advisory Committee (GAC) of the ICANN agreed it should be rejected.
IP Watch reports that representatives of Brazil, Argentina, Peru and Chile proposed that the GAC “advise” the ICANN Board to reject the application from the US company.
As no country attending objected to the proposal, the GAC now will send “consensus advice” to the ICANN Board to reject .amazon and various non-latin script versions of it.
New proposals for opening up second level .nz domain names
The .nz Domain Name Commission (DNC) has found there is no clear consensus for – or against – the proposal to allow registration of .nz domain names directly at the second level.
A major concern expressed by some submitters to the DNC was that existing registrants could feel “forced” to incur extra costs in registering anyname.nz on top of their existing anyname.co.nz name.
To mitigate this issue, DNC is proposing that existing registrants be able to reserve registration of the equivalent of their current name at the second level (for no cost for at least two years).
DNC believes this modified proposal delivers significant benefits to registrants without disadvantaging those who do not wish to use a name at the second level.
There are also other changes to the proposal following the initial consultation.
Google Adwords in the UK: Use of competitors’ TMs as keywords OK… sometimes
See Reed Smith’s report of Mr Justice Arnold’s detailed judgement in the Interflora v Marks and Spencer case on trade mark infringement as it relates to keyword advertising.
It is clear from the judgment that nothing is inherently wrong with bidding on and purchasing keywords that are trade marks of third-party competitors.
However, if there is any room for confusion as to the origin of goods or services, advertisers will need to exercise some caution. This is so even though Google labels paid for search terms as “Ads”.
ICANN approves .kiwi domain name
ICANN has officially approved Dot Kiwi’s bid to offer website addresses ending in .kiwi, which will be among the first of several hundred new gTLDs to open for business later this year.
However, as AJ Park reports, trade mark owners wishing to apply for .kiwi domain names will need to have recorded their marks with the Trademark Clearinghouse.
ICANN publishes applicant responses to GAC advice on new gTLDs
The response of applicants to the GAC’s advice to ICANN on new gTLDs have now been published.
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