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Key-Systems sued over brand protection trademark

Kevin Murphy, January 10, 2012, Domain Registrars

Israeli domain name registrar Domain The Net Technologies has filed a preemptive lawsuit against German competitor Key-Systems over their respective brand management trademarks.

According to the complaint, Domain The Net filed for a US trademark on the term “BrandShield”, which it uses to market brand protection services at brandshield.com.

Key-Systems, which runs a similar service called BrandShelter, filed an opposition to Domain The Net’s trademark application last October, due to the alleged potential for confusion.

Anticipating a possible lawsuit, Domain The Net has therefore sued first, asking the District Court in Virginia to declare that BrandShield does not infringe the BrandShelter trademark.

The complaint lists several dozen live brand+word trademarks to demonstrate that no one company should have exclusive rights to the word “brand”.

You can view the complaint, which was filed yesterday, in PDF format here.

(Hat tip: @GeorgeKirikos)

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Melbourne IT involved in 100+ gTLD applications

Kevin Murphy, January 10, 2012, Domain Registrars

Melbourne IT says it has prepared applications for over 100 new generic top-level domains on behalf of clients including members of the Association of National Advertisers.

The registrar’s CEO, Theo Hnarakis, said in a press release:

Big brands from around the world have already engaged with Melbourne IT Digital Brand Services to help them apply for more than 100 new TLDs.

Big name companies in the financial sector, plus the retail and consumer goods industries have shown the most interest in applying so far, and roughly a quarter of the companies we are assisting are members of the Fortune Global 500. Applicants working with Melbourne IT also include members of the U.S. Association of National Advertisers.”

The company agrees with the emerging industry consensus which estimates 1,000 to 1,500 applications between Thursday and April 12, with roughly two-thirds of those “dot-brand” applications.

It’s an open industry secret that many companies ostensibly opposing the new gTLD program with the ANA are also preparing applications, but their level of enthusiasm is still open to question.

Anecdotally, many potential dot-brand applicants appear to be under the misapprehension that a new gTLD application is necessary to defend their brands from top-level cybersquatters, which is not the case.

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Go Daddy gripe site relaunches with .co domain

Kevin Murphy, January 10, 2012, Domain Registrars

Erstwhile Go Daddy gripe site No Daddy, formerly found at nodaddy.com, has been relaunched under new ownership at nodaddy.co.

The original site opened in 2007 as a place for customers to share “horror stories”, but was acquired by Go Daddy last July at around the same time it secured a reported $2.2 billion investment.

It’s still not entirely clear whether Go Daddy paid off the previous owners, or whether it was legal or other threats that caused the nodaddy.com domain to change hands.

The site once ranked second only to Go Daddy itself in Google search results for the company’s name.

The new site, NoDaddy.co, is unaffiliated with the previous owners.

The owner identifies himself as “AdverseVariable” and the domain is registered using a Whois privacy service offered by Bahamas-based registrar Internet.bs.

The new forum currently only has one post.

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ANA’s modest proposal: let us take over the new gTLD program or we’ll sue

Kevin Murphy, January 9, 2012, Domain Policy

The Association of National Advertisers has offered ICANN a risible last-minute “solution” to the outrage it has created over the new generic top-level domains program.

The ANA wants ICANN to create a temporary “Do Not Sell” list to protect trademark owners and intergovernmental organizations during the first application round, which begins Thursday.

While the first round is open, the ANA itself wants to takes over policy development for the program.

This is its “Proposed Way Forward” in full:

1. ICANN will proceed with its plan to begin accepting applications for new TLDs on January 12, as scheduled;

2. Concurrently, all NGOs, IGOs and commercial stakeholders concerned about protecting their brands will be given the opportunity to have those brands registered, without cost, on a temporary “Do Not Sell” list to be maintained by ICANN during the first application round (any interested party which does not want to have its brands on the Do Not Sell list and would rather apply for a TLD would be free to do so).

We will assemble a team from the interested constituencies to work with ICANN leadership during the first application round. If this group achieves consensus with respect to any proposals, those proposals will be voted on by the Board.

At the end of the first application round, should the parties continue to disagree, all parties will be free to pursue their legal and equitable rights without prejudice.

The alternative to adopting this proposal, ANA president Bob Liodice said in a letter to ICANN today, is “destructive and costly litigation”.

ICANN’s response should be provided “IMMEDIATELY”, Liodice wrote.

I can’t see him getting the answer he wants.

First, the ANA still seems to be worried about top-level cybersquatting, which any sane person can see is extremely unlikely to happen under the new gTLD program’s existing policies.

Second, it’s asking for ICANN to give anyone with a trademark the right to block a string matching that trademark at the top-level.

This may appear reasonable if you think a trademark is something like “Coca-Cola” or “Gucci” or “Google”.

But as soon as you realize that pretty much every word – “music”, “blog”, “web”, “London”, “Paris” – is trademarked, the idea of a Do Not Sell list becomes clearly ludicrous.

It would be a recipe for banning all gTLDs from the first application round.

Third, ICANN already has a mechanism for letting interested stakeholders achieve consensus on new trademark protection policies.

It’s called ICANN, and you don’t need to threaten litigation to participate. You just show up.

You can read the entire laughable ANA proposal here.

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Trademark Clearinghouse coming in October

Kevin Murphy, January 7, 2012, Domain Policy

ICANN plans to have the Trademark Clearinghouse for new gTLDs up and running by October, according to documents released after this Thursday’s meeting of its board of directors.

The Trademark Clearinghouse is a central repository of trademark information that new gTLD registries will plug their systems into.

When a customer attempts to register a domain name in a new gTLD that matches a trademark in the Clearinghouse, they will receive a warning that they may be cybersquatting.

Nine companies applied for the position of Clearinghouse operator – as a paid service, it’s potentially a money-spinner – and ICANN expects to select one or more from a short-list of five in February.

According to the new ICANN document (pdf), twice-weekly talks between IP lawyers, registries and registrars are expected to finalize the Clearinghouse’s processes by March.

The system could go live by October, giving companies three months to submit their trademarks to the Clearinghouse before the first new gTLDs go live in early 2013, according to ICANN.

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