New Possible Domain Names

CanadaFashionLaw took a sneak peek at the newly applied for TLDs to see how the landscape of the internet could be changing.  With close to 2000 applications, CanadaFashionLaw thought it would be useful to see how the online fashion and retail landscape could change.  We take a look at the generic TLDs and then also note the brand-specific TLDs.  It’s interesting to note that the only geographic TLD application specific to Canada is .QUEBEC.

Generic Top Level Domains

.BEAUTY (3 applications – ownership likely to be disputed)

.CLOTHING

.FASHION (4 applications – ownership likely to be disputed)

.FITNESS

.GIFT (2 applications – ownership likely to be disputed)

.GIFTS (2 applications – ownership likely to be disputed)

.HAIR (2 applications – ownership likely to be disputed)

.JEWELRY (2 applications – ownership likely to be disputed)

.LIFESTYLE

.LUXURY (2 applications – ownership likely to be disputed)

.SHOP (9 applications – ownership likely to be disputed)

.SHOPPING (2 applications – ownership likely to be disputed)

.SKIN

.STORE (7 applications – ownership likely to be disputed)

.STYLE (5 applications – ownership likely to be disputed)

.WATCH

.WATCHES

.YOGA (3 applications – ownership likely to be disputed)

 

Brand-Specific Top Level Domains

.AMERICANEXPRESS

.AMEX

.BANANAREPUBLIC

.CALVINKLEIN

.CHANEL

.CLINIQUE

.COACH

.GUCCI

.HERMES

.KIEHLS

.LANCOME

.LOREAL

.MACYS

.MANGO

.MARSHALLS

.MEYBELLINE

.NIKE

.OLDNAVY

.POLO

.REDKEN

.SWATCH

.TIFFANY

.VISA

.WALMART

.ZARA

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Update on Impending Internet Explosion

For the last few years, CanadaFashionLaw has been following the eventual explosion of the internet (specifically Top Level Domains). It appears that the time is drawing near. If you use the internet as part of your marketing or for sales, you need to be aware of this new development.

By way of background, ICANN (the entity that runs the internet) decided that we were fast going to run out of online space. As such, it has opened it up to any entity to operate its own TLD. (A TLD is the “.com” part of a website address.) Until recently there were close to 300 types of TLDs (“.ca”, “.gov”, “.us”, “.org”, etc.) It is reported that close to 1,930 applications have been submitted for new TLDs. For the most part, the TLD applications fall into 3 major categories: (i) generic, such as “.shop”, (ii) geographic, such as “.paris” and (iii) brand-centric, such as “.gucci”. The applications are currently in the review stage and 232 are contentious applications, meaning either that there were multiple applications for the identical TLD or the proposed TLD is confusingly similar to an established brand.

The first batch of TLDs to be released is scheduled for Fall 2013 (although the whole process has experienced delays). These will focus on Internationalized Domain Names – domain names that are in non-latin script. Each launch is slated to have 3 launch phases, which affect when actual domain names can be registered with the new TLD” (i) sunrise, (ii) land rush and (iii) general. The sunrise period is only available to those entities that have registered their recognized trade-marks with the Trademark Clearinghouse.

Interestingly, we will also see a roll out of an alternative domain name dispute proceeding: URS. Like UDRP proceedings, it targets brand owners rights over the internet. Yet it is intended to be an even quicker avenue.

Stay tuned to CanadaFashionLaw for more updates.

If you have any questions on what this all means for your business and how you can prepare yourself, feel free to reach out.

Gucci Has a Big E-Win

Domain name disputes are pretty standard items in the brand protection strategies. Domain name disputes afford brand owners an expeditious and cheap way of securing ownership rights over infringing domain names. Case in point, Gucci’s significant win over 165 infringing domain names this week. Each of these infringing domain names was owned by 1 entity, that operated out of China. The domain names ranged from somewhat standard infringing domain names (guccidesigner-handbags.com, guccihandbags-group.com, etc.) to the more fanciful (freegucciyahoo.com, guccihomesale.com, newyahooguccihandbagshomes.com, etc.)

Domain name disputes are essentially tribunal hearings that have a very narrow scope and are preferable to court proceedings as (a) every domain name is subject to domain name dispute policy, regardless of where the domain name was registered in the world, (b) is limited to evidence and arguments that are submitted in writing, (c) go the heart of the matter: ownership of the domain name, (d) enable the tribunal to transfer ownership to the righful owner, (e) can be decided in months, as opposed to drawn out litigation that can take years. Every brand owner should incorporate domain name disputes into their brand protection strategy.

Gucci was able to satisfy the requirements to be awarded ownership over these domain names by proving:

a) the 165 domain names in question were identical or confusingly similar to Gucci’s trade-marks;
b) the owner of the allegedly infringing domain names did not have legitimate rights or interests in the domain names; and
c) the domain names were registered and being used in bad faith.

In addition, Gucci was able to demonstrate that the domain names were largely being used to sell counterfeit products.

The domain name owner did not contest Gucci’s complaint or file submissions to assert its rights over the domain names.