In an 8-1 decision, the Supreme Court of the United States agreed with the Internet Commerce Association’s position that under certain conditions, a generic .com domain name can obtain a trademark registration, albeit a very weak one, overruling the position advanced by the U.S. Patent and Trademark Office (USPTO). The USPTO had taken the position that no matter what, a …
INTERNET COMMERCE ASSOCIATION FILES SUPREME COURT BRIEF
Should generic .com domain names never be entitled to trademark protection? When a domain name like booking.com is identified as a brand by the public, should it still be denied trademark protection as a matter of law? The ICA takes a position on this difficult question in an amicus brief submitted to the U.S. Supreme Court of the United States …
Responsible and Prudent UDRP Panels Decline to Draw Conclusions in the Absence of Clear and Sufficient Evidence
In the recent case concerning Chatroulette.org , the Panel demonstrated the responsible and prudent approach in evaluating evidence in the UDRP. The Panel stated as follows: “The Panel takes the view that the Respondent’s denial of knowledge of the existence of the Complainant and his trade mark at that date is credible enough to require more from the Complainant to …
ICA Files ICANN Comment on Proposed .Museum RA Renewal
On October 3, 2017 the ICA filed a comment letter with ICANN regarding the proposed revisions to the renewal Registry Agreement (RA) for the .Museum gTLD. As with other legacy gTLDs that have renewed over the past two years, the new RA proposes to adopt Uniform Rapid Suspension (URS). ICA once again protests this de facto creation of Consensus Policy …
ICA Requests that NAFTA Renegotiation Address Protectionist .CA “Presence Requirements”
On September 11, 2017 the ICA sent a letter to U.S. Trade Representative Robert Lighthizer requesting that the ongoing renegotiation of the North America Free Trade Agreement (NAFTA) address protectionist restrictions so that U.S. entities and organizations wishing to register a .CA domain face no greater requirements than their Canadian counterparts face in registering a .US domain. As noted in …
Surge in RDNH cases a legacy of the theory of Retroactive Bad Faith
What do these Uniform Domain-Name Dispute-Resolution Policy (UDRP) filings have in common? — Dreamlines GmbH, a German cruise promoter, files a UDRP dispute on dreamlines.com, a domain registered 10 years before that company was formed. They do not allege any infringing use. Cognate Nutritionals, Inc., a Connecticut beverage company, which sells a coconut oil brain supplement under the brand “Fuel …
UDRP: Better Late than Never – ICA Applauds WIPO for Removing Misguided ‘Retroactive Bad Faith’
The Internet Commerce Association (ICA), a non-profit trade group representing the domain industry, applauds the World Intellectual Property Organization (WIPO) for removing misleading guidance from the newly released updated version 3.0 of its Overview of WIPO Panel Views on Selected UDRP Questions that in the previous version had granted undeserved legitimacy to a misconstruction of the UDRP commonly known as …
The Rise and Fall of the UDRP Theory of ‘Retroactive Bad Faith’
Since its establishment in 1999, the Uniform Domain Name Dispute Resolution Policy has required complainants to prove inter alia, “bad faith registration”. In practice, this has meant that where a domain name was registered before a trademark came into existence, that “bad faith registration” would be considered chronologically impossible.
.Com RA Extension on ICANN Board’s 9/15 Agenda
The “.COM Registry Agreement Amendment” is on the Main Agenda for this Thursday’s Regular Meeting of the ICANN Board. The proposed extension of the RA was announced and put out for public comment on June 30th. The public comment period closed on August 12th and ICANN staff’s Report of Public Comments was due on September 15th, coincident with the …
DOJ to Cruz: .Com Price Freeze can be Extended to 2024
On August 31st the Department of Justice (DOJ) sent a response to the August 12th letter from Senator Ted Cruz and some Congressional colleagues to the head of the Antitrust Division. In that letter Cruz et al asserted that if the pending extension of the .Com registry Agreement (RA) was granted in combination with the consummation of the IANA transition, …