The Wild West of gTLDs and Trademarks

By Evan Jensen Generic top-level domains (gTLDs) are a new and soon-to-be-huge feature of the internet. New websites using a wide variety of newly created domain names will soon be springing up like weeds. Owners of brands and trademarks need to be aware of the threats, and of their options and the tools that are available to protect their intellectual property on the web. This huge expansion of internet real estate also brings a new wave of speculators and cybersquatters. New gTLDs open up a world of possibilities for speculators and cybersquatters to claim popular words and marks for their own profit. Trademark holders need to be proactive in order to protect their marks from being exploited by vultures on the web by taking advantage of ICANN’s new trademark protections, including legal rights objections to gTLD’s and the newly-created Trademark Clearinghouse.

Ninth Circuit Finds Refusal To Transfer Website Domain Registered In Good Faith Can be Bad Faith “Use” For Purposes of the Anti-Cybersquatting Consumer Protection Act

In DSPT Int’l, Inc. v. Nahum, 624 F3d 1213, 97 USPQ2d 1022 (9th Cir. 2010), DSPT International, Inc. (DSPT) is a clothing designer, manufacturer and importer.  Paulo Dorigo, owner and founder of DSPT, hired Lucky Nahum, who was a friend of Dorigo, to help launch EQ, a new brand for DSPT.  Dorigo and Nahum set up a website in 1999 for EQ, and Nahum’s brother was to design and produce the website “http://www.eq-Italy.com” in order to display DSPT clothing under the EQ brand.  Nahum, who exclusively working for DSPT, registered the website domain name under his personal name, for a cost of $25 USD.