Domain Name Disputes

Trademark Clearinghouse To Help Combat Cybersquatting?

By In Domain Name Disputes, Domain Names, Famous Marks, Protection & Enforcement

A story earlier this week reported that the Internet Corporation for Assigned Names and Numbers (ICANN) – the organization charged with oversight of the Internet, including the creation of new generic top level domains (gTLD’s) – is considering setting up a centralized database of trademarks to help combat cybersquatting and other negative domain name registration practices.  The proposed IP Clearinghouse would be a depository for trademarks and provide unified rules for trademark holders to block domain name registrations that include use of such trademarks, unless the applicant can prove that its proposed use will be legitimate.

This proposal will be closely monitored by the trademark community as ICANN continues to move forward with its controversial proposal to exponentially expand the number of gTLDs.  The concern of trademark holders is that the task of protecting their brands online, which is already difficult enough with the existing gTLDs, will become prohibitively expensive.

The idea of the IP Clearinghouse was one of the recommendations outlined in the Final Report on Trademark Protection of ICANN’s  Implementation Recommendation Team (IRT).  At the recent ICANN meeting in Sydney, the IRT presented its report. The IRT Final Report was open for public comment until June 29, 2009.   ICANN might not make a final decision on the idea until late 2009, at which time it could potentially decide on a variation of the IP Clearinghouse, depending on the public comments that it receives.

Though it appears to be a moving target at the moment, the launch of the new gTLDs could potentially take place as early as February or March of 2010.

Free iPhone Bike App Sparks Dispute

By In Branding, Domain Name Disputes, Protection & Enforcement

The Montreal Gazette and La Presse each recently reported on the decision by the Stationnement de Montréal (“SdM”) to assert intellectual property rights against the developer of an iPhone application which pinpoints the locations of public-use bicycles made available for rental by the SdM.

Sparko.ca developed a free iPhone application called BixiMobile, together with a supporting webpage located at www.biximobile.com, to assist online users with finding Bixi bike locations throughout Montreal. The application launched on Sunday; by Tuesday, Sparko had received a cease-and-desist letter from Stationnement de Montréal’s counsel directing the company to withdraw the application, and hand over the domain.  Perhaps more interestingly, it appears SdM have additionally directed Sparko to hand over the code that supports the iPhone application. Read more

Yee Shall Seek… Declaratory Judgment

By In Case Law, Domain Name Disputes, Protection & Enforcement, Trademark Oppositions

Updating our previous post on the ROYAL CHINET trademark, the Nova Scotia Supreme Court in CKF Inc v. Huhtamaki Americas Inc. has confirmed “that declaratory relief is specifically available in the context of intellectual property disputes”, notwithstanding that such relief is not expressly provided for in the applicable act. In this case, the Plaintiff launched an action in Nova Scotia seeking, among other things, a declaratory judgment that it as an unconditional owner of certain trademarks in Canada. The Defendant, which commenced its own actions against CKF with respect to the same trademarks in Ontario and Maine, applied to strike CKF’s action on several bases, including that the Court could not grant CKF the declaratory relief it was seeking.

Finding that it had inherent jurisdiction to make the declaratory judgment sought, and that the declaration was not purely “hypothetical” or “speculative” since it related to an actual dispute between parties, and was practically necessary for the resolution of this dispute, the Court refused the Defendant’s application to strike.

Second MP Falls Victim to Cybersquatter

By In Domain Name Disputes, Domain Names

We note an interesting development relating to our recent post on domain name squatting, Cybersquatter Targets MP Keith Ashfield. The Toronto Sun reports that Liberal whip Rodger Cuzner also let his domain name registration lapse, and was surprised to discover that his previously owned domain is now home to a dating and porn website.

This emphasizes once again the need for public personalities (including politicians), as well as trade-mark owners, to diligently manage their online presence.

Psion’s NETBOOK Trademark Under Fire

By In Domain Name Disputes, Domain Names, Foreign Protection, Protection & Enforcement, Registration

The dispute over Psion’s NETBOOK trademark registrations has crept further into the mainstream, following recent decisions by Dell and Intel to take legal action against Psion in the US.

For those of you who missed it, Psion is a mobile computing device manufacturer whose head office is located in Mississauga, Ontario, Canada. Psion holds registrations for the trade-mark NETBOOK in Canada, the US, in Singapore, Hong Kong and in the CTM system.

In December, Psion sent letters to manufacturers and retailers in an attempt to “affirm” its NETBOOK trademarks. To this end, the letters requested the recipients to stop using NETBOOK to describe ultra-portable laptop computers.  Psion followed up with similar correspondence to journalists and bloggers in January. Read more

Cybersquatter Targets MP Keith Ashfield

By In Domain Name Disputes, Domain Names, Trademark Oppositions

CBC News reported recently that Conservative MP Keith Ashfield registered the domain name keithashfield.ca during the 2008 election.  When Mr. Ashfield failed to renew the registration, it was quickly scooped up by an apparent cybersquatter.  Cybersquatters (as they are commonly known), often register famous names or trade-marks in order to benefit from the associated goodwill to drive traffic to their websites.  Often these websites are “pay-per-click” sites which generate revenue for the cybersquatter.

The website now resolves to a site offering details on how to get prescription drugs without a prescription.  Exactly who holds the domain name is unclear, as this information has been privacy protected by the registrar, Namespro Solutions Inc., at the request of the owner. Under the current CIRA privacy policy, personal information of owners who are individuals is permitted to be cloaked, even if the domain name links to a commercial site. Read more

New .CA Whois Policy Now In Place – With A Twist

By In Domain Name Disputes, Domain Names, Protection & Enforcement

In a recent post, we reviewed the pending changes to the .CA Whois policy. On June 10, 2008, those changes were implemented. The biggest change is the cloaking of most of the Whois information for individual registrants, regardless of whether the domain names of such registrants are being used for commercial, unlawful or other purposes. In response to concerns of both law enforcement officials and the owners of intellectual property rights, CIRA has also implemented special procedures to permit the disclosure of personal information about individual .CA Registrants, provided various requirements are met.

For intellectual property owners, those requirements are numerous, including that the Requestor must have a good faith “Dispute” (as defined) in process with the Registrant, the Requestor must agree to provide CIRA with whatever supporting documentation CIRA may require from time to time, the Requestor must have attempted to send a message to the Registrant through the Interested Party Contact Procedure no less than 14 days prior to this request with no resolution of the Dispute.

The term “Dispute” is exhaustively defined and requires that a Requestor reasonably believe in good faith that a Registrant’s domain name and/or its content (presumably this reference to content is to content of a website that the domain name in question links to, rather than the content of the domain name itself) infringes the Requestor’s registered Canadian trademark, copyright or patent or registered Canadian (Federal or Provincial) corporate, business or trade name. A Dispute can also involve the use of the Requestor’s personal information without their knowledge or consent to commit identity theft.