MArch 2014 TBTRADEMARKS & BRANDSO ONLINE newsletter news And intelligence froM trAdeMArks & brAnds online hIghlIghtS In this issue: 5 US government to leave ICANN ContraCt 8 FaCebook hIt wIth “trademark bUllyIng” ClaIm 18 CopyrIght In the eU: pre-jUdgIng the issue? Page 14 20 the dUtIeS oF onlIne Service widening the net: provIderS dot Shabaka’s journey other ContentS >> Donuts Full PageA4.pdf 1 2/27/14 1:14 PM donuts Domains Protected Marks List (or "DPMl") provides the essential service of protecting trademark holders against cybersquatting at a fraction of the cost of defensively and individually registering the terms across all Donuts TLDs. .COMPANY .fail .support .FINANCE .business .MEDIA Affordable! Significantly less than defensive registration and less Powerful! Protects trademark than the cost of one UDRP. C and keywords containing mark. M Y CM MY CY Flexible! Protects all Donuts TLDs now, unblock and register Simple! Protects for five years. CMY in future. K Terms and conditions apply. Please visit www.donuts.co/dpml for details. © Donuts Inc. 2014 TBO Newsletter 03:14 ediTOr’s letter/cONTeNTs 3 MARCH 2014 Fresher and slicker TBTRADEMARKS & BRANDSO ONLINE NEWSLETTER Welcome to Trademarks & Brands Online, the new name for Trademarks Brands NEWS AND INTELLIGENCE FROM TRADEMARKS & BRANDS ONLINE and the Internet. We feel the new title is snappier and describes the content better. HIGHLIGHTS IN THIS ISSUE: 5 US GOVERNMENT TO LEAVE ICANN We hope you like it. While TBO continues as a quarterly magazine, we are now CONTRACT publishing a monthly newsletter. In this inaugural issue, we speak to Yasmin Omer, general manager of Dot Shabaka, 8 FACEBOOK HIT WITH “TRADEMARK BULLYING” which manages the generic top-level domain (gTLD). Pronounced ‘shabaka’ ةكبش CLAIM and meaning ‘web’ in Arabic, it was the first gTLD in a non-Latin script to go live on the internet. The project has personal roots for Omer, whose vision was to provide 18 COPYRIGHT IN THE Arabic users with a “first class” internet experience and build a sturdy domain name EU: PRE-JUDGING THE ISSUE? industry in the Middle East. Over in Europe, all eyes are on the European Commission’s review of copyright. Page 14 20 THE DUTIES OF The commission, seeking to make the rules relevant in the digital age, asked ONLINE SERVICE Widening the net: PROVIDERS stakeholders 80 questions in its consultation. As thousands of responses flooded in, Dot Shabaka’s journey the commission extended the deadline earlier this year, and is now considering the answers. Adam Rendle of Taylor Wessing LLP assesses the consultation’s potential OTHER CONTENTS >> implications for rights online. Trademarks & Brands Online is published by: Then, along with our comprehensive news section, we hear from Susan Kayser of Newton Media Limited Kingfisher House, 21-23 Elmfield Road, Bromley, law firm Jones Day, who analyses when online service providers might be found BR11LT, United Kingdom liable for trademark infringement. Is a host or sponsor of online content obliged to +44 203 301 8200 Director police itself to prevent third-party counterfeiting? If yes, what is the extent of that Nicholas Lipinski duty? And how much is enough? These are just some of her questions. Publisher John Haley We hope you enjoy reading her article and all the others in this first TBO monthly Telephone: +44 203 301 8205 newsletter. Email: [email protected] Managing editor Ed Conlon, editor Martin Essex Telephone: +44 203 301 8211 Email: [email protected] Editor Ed Conlon Contents Telephone: +44 203 301 8210 Email: [email protected] 5 News Sub-editor 5 US government to leave ICANN contract Ros Bromwich 6 Political ad blocked for Simpsons reference Journalists Leonie Mercedes, Max Walters 6 Amazon to appeal against Lush ruling Editorial assistant 7 Canyon Bicycles wins first new gTLD UDRP case David Brooke Senior project manager 8 Facebook hit with “trademark bullying” claim Andrew Mitchell 9 French football league suffers UDRP defeat Telephone: +44 203 301 8217 Email: [email protected] 10 Arabic UDRP provider turns on the lights Production and design 10 Microsoft criticised over rebranded SkyDrive Fisherman Creative ©Newton Media Limited 2014 11 Google and Viacom settle copyright dispute All rights reserved. No part of this publication may be 12 Rimmel UDRP panellist blasts “monkey business” reproduced, stored in a retrieval system, or transmitted in any form or by any means, electrical, mechanical, 13 ICANN gTLD auctions set for this summer photocopying, recording or otherwise without the prior written permission of the publisher. 13 TMCH sends more than 500,000 cybersquatting warnings The views expressed inTBO are not necessarily those shared by the publisher, Newton Media Limited. 14 Big interview: new gTLDs Wishing to reflect the true nature of the market, we have included articles from a number of sources, Widening the net: the first Arabic gTLD and the views expressed are those of the individual contributors. No responsibility or liability is accepted by 18 Legal update: Newton Media Limited for any loss to any person, legal or physical, as a result of any statement, fact or figure Copyright in the EU: pre-judging the issue? contained in TBO. This publication is not a substitute for advice on a 20 Case study: specific transaction. The publication of advertisements does not represent endorsement by the publisher. The duties of online service providers Trademarks & Brands Online (TBO): ISSN 2049-2359 (Print) www.worldipreview.com 4 ediTOrial paNel TBO Newsletter 03:14 Ben Safir Anand, Edward Elisa Allgrove, partner, Chatterton, Cooper, partner, Anand & partner, DLA senior Baker & Anand Piper director of McKenzie product LLP marketing, MarkMonitor Stuart Fuller, David Green, Marie- Brett director of head of Emmanuelle Heavner, communications, global digital Haas, head partner, NetNames marketing, of the internet Finnegan, KPMG committee, Henderson, ECTA Farabow, Garrett & Dunner LLP Susan Roland Igor Motsnyi, Gretchen Kayser, LaPlante, partner, Olive, director partner, Jones chief Motsnyi Legal of policy Day marketing Services & industry officer,Afilias affairs, CSC Digital Brand Services John Olsen, Flip Petillion, Adam Kristina partner, partner, Rendle, Rosette, Edwards Crowell & associate, of counsel, Wildman Moring LLP Taylor Covington & Palmer LLP Wessing LLP Burling LLP Bob David Taylor, Stéphane David Samuelson, partner, Van Gelder, Weslow, vice president Hogan Lovells managing partner, Wiley of sales and International director, Rein LLP marketing, LLP Milathan Donuts Inc Catherine Nick Wood, Wolfe, managing with thanks to the members of the partner, Boult director, Trademarks & Brands Online editorial board. Wade Tennant Valideus contact ed conlon, the editor, for more information. www.worldipreview.com TBO Newsletter 03:14 News 5 US government to leave ICANN contract IN BRIEF The US government is to withdraw from “The timing is right to start the transition University bags firste nglish- its contract with ICANN that allows the process,” said assistant secretary of commerce language .brand organisation to perform several internet- for communications and information related tasks. icAnn has delegated the first english- Lawrence Strickling. “We look forward language .brand gtld to Australia-based At a press conference on March 14, ICANN to ICANN convening stakeholders across Monash University. officials said they will consult the “global the global internet community to craft an registry operator Ari registry services, internet community” on how best to replace appropriate transition plan.” the US government. which helped to delegate .monash, At the press conference in Los Angeles, said that the gtld will become a “core The government will have the final say on ICANN’s chief executive Fadi Chehadé component of the university’s digital ICANN’s proposal but said it will not accept strategy”. a government-led or an inter-governmental said ICANN is inviting governments, the Although Ari states that .monash is the organisation “solution”. private sector, civil society and other internet organisations in the search. world’s first brand gtld, some reports ICANN carries out several functions, most have indicated that chinese bank citic notably delegating top-level domains (TLDs), ”All stakeholders deserve a voice in the was delegated its .中信 (‘citic’) domain at under a formal relationship with the US management and governance of this global the same time as Monash. Department of Commerce. Known as the resource as equal partners,” he said. Internet Assigned Numbers Authority (IANA) contract, it was signed in 2000 and has been Stephen Crocker, who chairs the ICANN board, renewed several times. added: “Even though ICANN will continue to perform these vital technical functions, the US There have, however, been increasing calls for ICANN to become less US-centric. In has long envisioned the day when stewardship February, the European Commission said over them would be transitioned to the global it wants to establish a “clear timeline” for community. In other words, we have all long globalising ICANN and the functions of the known the destination. Now it is up to our IANA contract. global stakeholder community to determine At the time, commission vice president Neelie the best route to get us there.” Kroes explained that some people are calling According to the government, ICANN’s for the International Telecommunications proposal must have “broad” community Union to take control of key internet functions,