Posts Tagged: "domain names"

Trader Joe’s Charges Crypto Company with Fraud, Trademark Infringement/Dilution

A trademark lawsuit filed by popular grocery store chain, Trader Joe’s, against a cryptocurrency platform called “Trader Joe”—which the complaint alleges is a deliberate reference to the supermarket—has come to light this week. Trader Joe’s claims that the crypto firm buried its origin story in order to win international litigation over the domain name, traderjoexyz.com. Trader Joe’s has offered grocery services under the mark TRADER JOE’S for more than 50 years. According to the lawsuit, a co-founder of the crypto company Trader Joe, going by the handle “cryptofish,” admitted in a Substack publication that the company’s name originally derived from the name of the Trader Joe’s supermarket chain.

Statute of Limitations Under the Anti-Cybersquatting Statute: A Very Limited Limitation

Despite being codified more than 20 years ago, there are many open questions regarding application of the Anti-Cybersquatting Consumer Protection Act, 15 U.S.C. § 1125(d) (“ACPA”). Certainly, domain name conflicts continue to evolve given the continued importance of the domain name system to the Internet and the constant changes in both technology and strategies of offenders. But there are also open questions in the application of the cybersquatting law itself, including the applicability and application of statutes of limitations. Does a statute of limitations apply to ACPA claims? If so, how long is it? And from when does it run? This article discusses the relatively small body of law that analyzes statutes of limitations for cybersquatting claims under the ACPA.

CAFC Denies Registration for Stylized .SUCKS Mark

The U.S. Court of Appeals for the Federal Circuit ruled earlier today that a stylized form of the trademark for the .SUCKS domain name failed to create a “separate commercial impression” warranting registration by the U.S. Patent and Trademark Office (USPTO). Vox Populi Registry Ltd. is the domain registry operator for the controversial .SUCKS generic top-level domain (gTLD). The USPTO’s Trademark Trial and Appeal Board (TTAB) in October 2020 affirmed an examiner’s decision to refuse the stylized mark, as well as the standard character word mark for .SUCKS.

Eleventh Circuit Affirms Summary Judgment on Cybersquatting Claims Brought by Owner of ‘European Wax Center’ Mark

On August 6, the U.S. Court of Appeals for the Eleventh Circuit issued a decision in Boigris v. EWC P&T, LLC in which the appellate court affirmed a ruling by the Southern District of Florida granting summary judgment to EWC, the owner of the nationwide European Wax Center chain of beauty salons, on cybersquatting claims filed against the owner of several GoDaddy domains that were registered in bad faith to profit from EWC’s stores. Although the majority found that the accused domain names and EWC’s registered trademarks were confusingly similar in sight, sound and meaning, the dissent raises interesting questions regarding the proper standard on confusing similarity at the summary judgment stage.

Is a Common Word Added to a TLD Like ‘.com’ Inherently Generic? Who Decides?

On November 8, the U.S. Supreme Court granted a Petition for Writ of Certiorari from the U.S. Patent and Trademark Office (USPTO) on the following issue: “Whether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” The issue stems from Booking.com B.V.’s attempt to register four versions of the trademark “booking.com” for, among other services, “making hotel reservations for others.” The applications, filed in 2011 and 2012, were refused by the USPTO on the grounds that “booking” and “.com” are generic terms which, when combined, nonetheless create a generic term which describes the travel agency and reservation services. In general, generic terms do not function as trade or service marks and cannot be registered.

The GDPR In Full Effect: What Will Happen to WHOIS?

It has been a long time coming, but the General Data Protection Regulation (GDPR) is almost here. This new privacy regulation requires substantial changes to the collection and storage of data and will affect multiple disciplines, including the brand protection industry. One of the ‘victims’ of the new law is the WHOIS database. How will these changes affect its records?

Sprint Still on the Hook to Comcast for $7.5 Million

The Federal Circuit affirmed a jury award of $7.5 million for Sprint’s infringement of three Comcast patents. The district court did not error in construing the challenged claims, there was sufficient evidence to support both the jury’s verdict and the award of prejudgment interest.

GoDaddy IPO could bring a nearly $3 billion valuation thanks to IP holdings

Publicly traded shares of stock in the company will initially be priced in a range from $17 to $19 each. If each of the 22 million shares which the company plans on offering are sold at the high end of that range, it could net the company $418 million. This will be aided by a small but meaningful patent portfolio made up of nearly 150 U.S. patents, which cover core innovations relating to domain name valuation, domain name hijacking prevention and methods for creating an Internet business.

Why Brands Need to Pay Attention to Unregulated Domains

The ‘.bit’ domain, a new decentralized domain structure, has secured a small but loyal following, and could one day change the way brands operate online. .bit registrations are not associated with a name, address, or phone number, but are linked to a cryptographic identity, preserving anonymity. Unlike customary domains – such as ‘.com’ – ‘.bit’ cannot be accessed from traditional web browsers or registered using traditional currency. Instead, individuals attempting to gain access to these domains must first download specialized software that allows access to the sites using Windows browsers, and pay for the registration with a crypto currency called Namecoin.

U.S. Commerce Department Announces Plan to Accelerate Transition to Private Management of the Domain Name System

The immediate practical consequences for domain-name registration while the transition proposal is developed are likely to be limited. Nevertheless, while the Department’s current DNS stewardship is not ending in the short term, the contemplated private-sector supervision arrangement is likely to tend to bolster the influence that non-U.S. entities have on domain-name policy questions in the long run. That may please foreign critics of the current system while raising possible concerns about foreign governmental interference in Internet-management issues.

WIPO Director General Says its Time for Legal Digital Marketplace

Looking forward to an intermediate and longer-term horizon, Gurry explained that Member States should seize the moment to work toward establishing a legal global digital marketplace to replace. He explained that fears about such a global marketplace should not bog down the effort because there is already a global digital marketplace in effect, but that the one currently in existence is one that is an illegal marketplace that does not respect the rights of creators.

The First 3 Steps to Starting a Website or Blog

With the growing trend of online marketing for business, it has become important to have a distinct Internet presence. A blog can give help you raise your search engine ranking, get more traffic and even win over more customers. Setting up your own business blog isn’t difficult if you know the steps to take. Here are the first three critical steps, or action items, to setting up your blog, or just going down the path of setting up a website.

Article One Targets Patent Owned by Acacia Research

One of the newer prior art research studies currently underway at Article One Partners is one that relates to U.S. Patent No. 6,332,158, which relates to a system that assists user’s in selecting desired domains. This study is of particular interest because the patent in question is owned by a subsidiary of Acacia Research Corporation, which is one of the largest and most powerful of the patent assertion entities (PAE) in the industry today. The technology in question in the Acacia owned patent is a domain name lookup system and associated method. In the method a domain name query is sent from a resolver process when the user wishes to obtain information. If the domain name exists, the domain name server provides the corresponding machine address back to the user’s computer. However, when the domain name query uses a non-existent domain name then a machine address for a computer that executes a domain recommendation engine is provided. The domain recommendation engine assists the user in locating a desired domain name.

The New GTLDs and What it Means for Your Organization

If your organization identifies generic or geographic terms relevant to your industry or consumer base, such as .bank, .kids, .music, or .nyc, consider registering second level domain names reflecting your brands (e.g., suntrust.bank, hasbro.kids, ladygaga.music or wendys.nyc), particularly during the sunrise period available to brand owners. Do not overlook the potential for utilizing generic or industry-focused gTLDS to synergize your organization’s branding and marketing strategies once the new gTLD strings go live. A well-known industry term such as .bank for the financial sector or .sport for athletic associations, sports franchises, and sportswear companies may become the “go to” place for consumers interested in these topics. If so, these gTLDs may be important vehicles by which to promote your company and its brands.

WIPO 2010 ADR Report: Cybersquatting Hits Record Level

The World Intellectual Property Organization (WIPO) recently announced that the number of cybersquatting cases has reached an all time high. In 2010, trademark holders filed 2,696 cybersquatting cases relating to some 4,370 domain names with the WIPO Arbitration and Mediation Center (WIPO Center) under procedures based on the Uniform Domain Name Dispute Resolution Policy (UDRP). This spike in the number of domain name disputes caused by cybersquatting represents an increase of 28% over the 2009 level and of 16% over the previous record year, 2008.