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proTECHt Update

06 June 2008

Domains
 
Sunrise launch of .mp for Northern Mariana Islands

The Domain Name Registry for The Northern Mariana Islands has launched the registration of .mp domains. The Registry has launched the registration of .mp domains with a Sunrise period for the holders of some registered trade and service marks. Registration will be unrestricted following the end of the Sunrise, although certain geographic terms will be restricted, registration of some generic terms such as sex.mp are also currently unavailable.

The Sunrise has started and will close on 31 August 2008 at 12:00pm GMT. Sunrise application is available to the owners/co-owners or assignees of a nationally:

a) registered trade mark, European Community trade marks will be deemed sufficient for this; or

b) service mark.

The mark must have been registered or applied for before 1 July 2007. If applying on the basis of an application for a trade mark, the trade mark must be registered at the time the domain name registration is complete.

The domain name must be identical to the word or textual elements of the mark. However inclusion of the term 'sucks' will be deemed identical for this purpose, for example trade-mark-sucks.mp.

During the Sunrise, domain names will be allocated to the first valid application.  A Challenge Period for Sunrise applications will operate between 8 September 2008, until 7 November 2008. During this period it will be possible to apply to launch a dispute against a Sunrise application for a .mp domain on four criteria. Please contact us for further details of this.

To complete the registration requires:

  1. the textual element of the mark
  2. the registration number/identifying the mark
  3. the application date of the mark
  4. the registration date of the mark

the jurisdiction, country or European Community of the mark
The Registry plan to launch the period of unrestricted registration of .mp domains on 1 September 2008, 12:00 pm GMT. The Registry do not plan to provide a publicly available whois, displaying the Registrant/owners of domains, as .mp domain names will be encouraged for use in social networking.

Proposal for new .car domain

A proposal for new domain .car has been suggested by ATX Group. ATX Group is the world's largest independent telematics services provider to the automotive industry. Dotcar, similar to .mobi, suggest that content of websites located by .car would need to meet a criteria specifically for the delivery of web content into vehicles. ATX Group suggests 'In addition to Web content, it is envisioned that dot.car Web sites could also utilize such telematics-centric, real-time data as vehicle performance and maintenance diagnostics data, as well as vehicle location data. Also proposed is a telematics firewall process specifically designed to ensure the total protection of the vehicle from content that is delivered over the air to the in-vehicle browser for the entire life cycle of the automobile.'

Re-sale of .com.au Australian domains permitted

The Australian Domain Name Registry have amended the registration policy so that as of 1 June 2008, owners of .com.au domain name may resell these domains to other entities eligible to register and hold a .com.au domain name. Previously reselling .com.au domain name was prohibited. However two significant restrictions exist on reselling .com.au domains. First, it is not permitted to register a domain name for the sole purpose of resale or transfer to a third party. Secondly, registrants/owners will not be able to transfer their domain name for the first six months after the initial registration (this does not apply to domain names that have been renewed or previously transferred).

Monitoring

Google removes protection for Trade Mark holder from Google's keywords

It is now possible for parties other than Trade Mark Holders to bid on the right to keywords in Google's advertising sponsored link system, AdWords. This follows the dismissal of a lawsuit in the High Court against Yahoo! and its sister company Overture. Yahoo! were sued by Victor Wilson the owner of a London-based catering business. Mr Wilson held registered Community Trade Marks in some food and hospitality-related goods and services, and sold snacks at festivals under the name 'Mr Spicy'. However a search by the 'Mr Spicy' in Yahoo!'s UK search engine revealed sponsored links for Sainsbury's and a price comparison site PriceGrabber.co.uk, which Mr Wilson suggest infringed his trade mark rights.

The commercial outcome is likely that the cost of acquiring the use of such keywords will increase as non trade mark holders enter bids for these terms. Brand owners should be extra vigilant with their keyword portfolio.

Enforcement

ICANN enforcement against Registrars

ICANN's continuous enforcement activity has resulted in sending enforcement notices to some Registrars. Registrars are the organisations which it is necessary to submit applications via when registering Generic Top Level Domains, such as .com domains. ICANN relies upon the wider Internet community to report domains with inaccurate data using the Whois Data Problem Report System (WDPRD), developed in 2002. This has been followed by a prominent identification of 10 Registrars by KnujOn (No Junk spelt backwards) as those used to register the majority of domain names used in spam email.

Contact

For further information, please contact Simon Chapman or Edmund McLaren.

Contacts

Simon Chapman

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