Domain Names

8 Apr 14: ICANN puts off decision on .wine and .vin gTLDs (again) - in response to concerns raised by the Governmental Advisory Committee (GAC) and the wine industry

20 Mar 14: New gTLDs are disruptive to trademark protection, says WIPO – and will require trademark owners to adjust their priorities in terms of registration and protection choices

19 Mar 14: UK to introduce ‘.uk’ domain names - meaning that registrations of <> will be  available, alongside registrations such as <> and <>

9 Aug 13: The download from Durban: reflections on ICANN 47 – a good report on the outcomes of the Durban meeting of ICANN (Reed Smith)

2 Aug 13: Governments disagree on GI protection at TLD level - Despite strong lobbying, the ICANN GAC has not removed its advisory ban on registration of geographical indications as top level domains (IP Watch)

18 Jul 13: Key topics to follow during ICANN 47 - a good summary of key issues for the Durban meeting of ICANN, including developments in the new gTLD program and discussions of Internet policy processes (Katten)

17 Jul 13: GAC advises ICANN to reject .amazon gTLD bid - Amazon’s bid for their own top level domain, .amazon, might be doomed after the Governmental Advisory Committee of the ICANN agreed it should be rejected

20 Jun 13: New proposals for opening up second level .nz domain names – Because there is no clear consensus for – or against – the allowing registration of .nz domain names directly at the second level, new proposals are being considered

7 Jun 13: Google Adwords in the UK: Use of competitors’ TMs as keywords OK… sometimes – It is OK to purchase keywords that are trade marks of third-party competitor, but caution is required if there is any room for confusion as to the origin of goods or services advertised (Reed Smith)

3 Jun 13: ICANN approves .kiwi domain name – but trade mark owners wishing to apply for .kiwi domain names will need to have recorded their marks with the Trademark Clearinghouse (AJ Park)

27 May 13: ICANN publishes applicant responses to GAC advice on new gTLDs

22 Apr 13: ICANN appoints ADNDRC as additional URS provider - ICANN has signed a Memorandum of Understanding establishing the Asian Domain Name Dispute Resolution Centre as a Uniform Rapid Suspension System (URS) provider

22 Apr 13: GAC issues advice to ICANN regarding new gTLD applications – which includes not proceeding beyond initial evaluation with certain geographic strings

17 Apr 13: Abusive domain name registration of personal name not actionable - A recent Nominet DRS decision has confirmed that an individual does not have ‘rights’ in their own name – even a very rare one – sufficient to found a case for transfer of an abusively-registered domain name

10 Apr 13: Brand owners seek their own ICANN constituency group - Brand owners that have applied with ICANN for their brand’s TLD would like to get their own registry model, with a reduced set of obligations (IP Watch)

8 Apr 13: More contractual obligations for new gTLD operators? - Members of the Government Advisory Committee (GAC) of ICANN are pushing for additional contractual clauses for applicants of new generic top-level domains (IP Watch)

14 Mar 13: Update on procedures for objecting to new gTLDs - See Baker Hostetler’s summary for an update on the details of the four objection procedures

27 Feb 13: ICANN announces launch date for Trademark Clearinghouse – The ”cornerstone of the rights protection mechanisms” built into ICANN’s new gTLD program, the Trademark Clearinghouse, will open for registrations on 26 March 2013

25 Feb 13: ICANN seeks comment on “closed generic” gTLDs - Following concerns expressed by brand owners, governments and other stakeholders, ICANN has opened for public comment the issue of whether and when applications for new gTLDs that are generic may be “closed”

20 Dec 12: New gTLDs preliminary prioritisation list released by ICANN – and is available here

11 Dec 12: Registry and registrar not liable for infringing domain names – The Paris Court of Appeal ruled that the registry for ‘.fr’ was not liable for failing to block an infringing domain name on notice, and that the Luxembourg-based registrar was not liable for failing to monitor the registration of potentially infringing domain names (Hogan Lovells)

22 Nov 12: Australia dominates Early Warning Notices on new gTLDs - The Australian government has filed over 130 early warning notices objecting to applications for new gTLDs, well more than any other country

9 Nov 12: Enforcement issues in the new gTLD program – post-Toronto update – Steptoe & Johnson report on program developments, upcoming deadlines, and potential enforcement options, including development of strategies to detect and deter possible infringement, following from the October ICANN meeting in Toronto

31 Oct 12: Nominet finds critical website not an abusive domain name registration – The domain name <> was found not to be an abusive registration, since its purpose was the genuine criticism of Optical Express.

29 Oct 12: Ontario court considers tort of passing-off domain names - The Ontario Superior Court of Justice recently ruled on the elements of the tort of passing-off in the context of internet domain names (Oslers)

16 Oct 12: Nominet proposes opening .uk domain names at 2nd level - The UK domain name authority has commenced public consultations on permitting businesses with a UK address to register <> instead of <>

4 Oct 12: Misleading domain name breaches UK advertising standards code - The UK Advertising Standards Authority (ASA) has determined that use of a misleading domain name to link to an advertisement infringes advertising standards

3 Sep 12: New gTLDs won’t be operational before August 2013 - According to ICANN’s recently-published “roadmap”, the earliest any new gTLD will be delegated is August 2013

27 Jul 12: Brand owners ‘crowdsource’ evaluation of new gTLD applications - A group of brand owners has adopted a crowdsourcing approach to the ICANN public comment process for challenging new top-level domain name applications (BNA)

27 Jul 12: .nz domain name authority proposes opening second level - The New Zealand Domain Name Commission is proposing to extend the .nz domain name space by allowing anybody to register domain names at the ‘second level’

18 Jul 12: How to dispute a new gTLD application – There are four bases for submitting a formal objection to any of the 1,930 applications that ICANN received in the first round of the new gTLD program

3 Jul 12: Valid trademark defence not valid domain name defence in France - The Paris Court of Appeal has decided that while prior continuous use of a term as part of a company name, a trade name and signage could constitute a valid defence to a claim for trademark infringement, it could not justify registration and use of a .fr domain name containing that term (Hogan Lovells)

29 Jun 12: De novo review of UK domain name dispute resolution procedure not available – The issue of abusive registration of a .uk domain name may be determined only by an expert appointed under the Nominet Dispute Resolution Service (DRS) Policy – hence there is no independent cause of action for ‘abusive registration’ that may be pursued in a UK court

14 Jun 12: Over 1900 new gTLD applications received by ICANN - Details of the 1930 applications received in the first round allocation of new gTLDs show that nearly one-half of all applications are from North America, and one-third are from Europe – with <app> being the most popular applied-for gTLD

12 Jun 12: ICANN announces further details of Trademark Clearinghouse - ICANN has announced it has appointed Deloitte and IBM as service providers to the Trademark Clearinghouse, which will accept and authenticate rights information, and will support both trademark claims and sunrise services, for all new gTLDs

4 May 12: Nothing Revealed on “Reveal Day”: New gTLD Application System Remains Suspended – All that has been revealed on the much anticipated “Reveal Day” — so dubbed by ICANN itself — is that ICANN remains mired in technical glitches (Mintz Levin)

2 May 12: UDRP transfer can be overturned under ACPA due to misleading evidence - The US Court of Appeals for the Fifth Circuit has recognised that a domain name transfer achieved though a successful action under the UDRP can be overturned under the ACPA where the evidence in the UDRP action was misleading

24 Apr 12: Update on ICANN’s new generic top-level domain roll-out - The first deadline in ICANN’s ambitious gTLDs roll-out has hit a glitch, but it appears that the other dates will not be affected by this delay – including, in particular, what ICANN has dubbed “Reveal Day” (May 1st), when ICANN will publicly post all applied-for TLD character strings (Loeb & Loeb)

7 Mar 12: Cybersquatting cases reach record numbers

9 Dec 11: ICANN warned again in the US on new Internet domains (IP Watch) – Members of the US Senate Committee on Commerce, Science and Technology propose that ICANN pursue a slow start with new top-level domains (TLDs).

2 Oct 11: “Re-Registration” of domain name  registered before trademark adopted can’t support claim under ACPA (Stoel Rives) – The Ninth Circuit holds that the owner of a federally registered mark cannot establish a claim for cybersquatting under the federal Anticybersquatting Consumer Protection Act where the disputed domain name was registered by the original owner before the plaintiff’s mark had become distinctive, even where a subsequent owner acquired the domain and sought to exploit it for profit in bad faith.

27 Sep 11: Russian domain name registrar yields to trademark owners’ pressure (Baker & McKenzie) - The largest domain name registrar in the ‘.rf’ domain has changed its regulations and client agreement to provide that it can cancel ownership of a domain name at its own discretion, without a court order, if a registered owner of a trademark or company name in Russia submits a claim for the domain name.

12 Sep 2011: Comparative study of ccTLD and gTLD Dispute Resolution Policies (CIRA) – The Canadian domain name authority publishes a comparative study of the dispute resolution policies of 30 country code top level domains (ccTLDs).

7 Sep 2011: Domain names are personal property says Canadian court - The Ontario Court of Appeal has ruled that a domain name constitutes personal property. As a consequence, an Ontario court has jurisdiction to grant declaratory relief that would circumvent a UDRP action.

6 Sep 2011: Policy panel recommends retention of .au eligibility requirements - The Names Policy Panel of the .au domain administrator has concluded that .au should remain restricted to Australian entities and individuals.

6 Sep 2011: “Champagne” not a trademark for a UDRP action - The owners of the wine geographical indication “Champagne” failed in an action under the UDRP to win the domain name “”.

31 Aug 2011: ANA slams ICANN’s new TLD program (ANA) - The United States Association of National Advertisers claims that ICANN’s new gTLD program “is economically unsupportable and likely to cause irreparable harm and damage”, and “violates common sense”.

30 Aug 2011: Protecting rights in light of new adult-entertainment domains (Lexology)

25 Aug 2011: ICANN under pressure to halt gTLD programme (Managing IP)

15 Aug 2011: Octogen doctrine dealt damaging blow (Managing IP)

17 May 2011: The World Intellectual Property Organization has urged the organisation responsible for the internet domain name system to step back from revising its procedures for judging disputes about cybersquatting (WIPO)

11 May 2011: How to keep your brand name out of the Adult industry’s neighborhood (Sunstein Law)

11 April 2011: WIPO says cybersquatting filings are sharply up, and watches ICANN’s domain name expansion (IP Watch)

1 April 2011:  WIPO has now released the second edition of its UDRP Overview (‘WIPO Overview 2.0′) (WIPO)