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  • Wawa Convenience Stores Sues Florida Restaurant for Trademark InfringementThu, 11/20/2014 - 18:30

    Wawa, the American convenience store chain, is suing a Florida restaurant called Wawa Curry Taste of India for “violating its rights to the name.” The restaurant’s owner, Yogi Patel, says the restaurant’s name comes from a Gujerati phrase meaning “good job” or “congratulations.”

    The lawsuit claims that the restaurant’s use of the Wawa name “impairs the distinctive quality” of its trademark, seeks “unspecified compensation” for the use of the name, and asks that the restaurant be prohibited from using it.

    Despite being common in the eastern United States (with over 600 stores), not many people know the origin of the convenience store chain’s name. According to the company’s website, Wawa, Inc. began in 1803 as an iron foundry in New Jersey. The owner expanded into dairy farming and opened a small processing plant in Wawa, Pennsylvania in the early 1900s. The first Wawa Food Market opened in 1964. The company’s logo features a goose since “wawa” is a native American word for the Canada geese found in Pennsylvania’s Delaware Valley.

    In a statement to the Orlando Sentinel, a Wawa spokesperson wrote: “At Wawa we support the success of all businesses including Mr. Patel’s Indian restaurant. That said, we have an obligation to protect consumers from any likelihood of confusion that may occur in the marketplace and to protect the brand name, goodwill and reputation that we’ve worked so hard to build over the past 50 years…”

    The restaurant’s owner told the newpaper: “We can’t fight them. We are just a small restaurant, so we will have to change our name.”

  • Beware Counterfeit Ads in Your Holiday Shopping FrenzyTue, 11/18/2014 - 18:30

    Nearly25% of 1,000 fashion and luxury goods ads on Facebook turned out to be for counterfeit products, including Ray Ban sunglasses, Louis Vuitton bags, and Ralph Lauren polo shirts, according to a new study by two cybersecurity researchers reported on Mashable.

    Although the ads and their URLs may look legitimate, be aware that you really don’t know where you could end up once you’ve clicked on it. One of the study’s authors, Andrea Stroppa warned: “… in many cases your credit card is at risk, thanks to obscure payment systems backed by companies you have no idea who they are.”

    Besides the seemingly legitimate URLs, several of the sites examined in the study used fake logos not only for the “designer” brands, but also for the security and payment systems supposedly used on the sites. Many of the domains were found to be registered in China, although it’s impossible to know where the sites are actually located and who runs them.

    A Facebook spokesperson told Mashable: “We prohibit fraudulent or misleading claims or content, and to enforce our terms and policies, we have invested significant resources in developing a robust advertising review program that includes both automated and manual review of ads.”

    Facebook isn’t alone in facing this deluge of counterfeit advertising. Last year, Google removed more than 350 million bad ads and banned approximately 14,000 advertisers for trying to sell counterfeit goods —an 80% decline from 2012.

    What’s the most obvious counterfeit ad you’ve seen recently?

  • NgTLD Update: New Domain Block Debuts, New TLD Launches & MoreMon, 11/17/2014 - 19:55

    Here is a round-up of the latest new gTLD news:

    You may be interested to learn that one the biggest registry operators, Minds + Machines, will launch its own “MPML,” for Minds + Machines’ Protected Marks List. As with Donuts and Rightside Registry’s DPML blocks, MPML will provide brand owners with the opportunity to protect their TMCH-registered trademarks by blocking those names, across current and future TLDs for which Minds + Machines is the official registry operator. We expect that many brand holders who have already secured blocks for Donuts and Rightside will see this as a natural complement to their existing strategy.

    This week, we see the registry launches for nine new TLDs:

    • Rightside Registry (.FORSALE, .DEGREE, .GIVES and .RIP)
    • Minds + Machines (.CASA, .WORK and .YOGA)
    • Radix Registry (.SPACE)
    • geoTLD .RIO (New Sunrise Period Announced)

    We also alert you to the launch of an additional TMCH Sunrise Period for .BRUSSELS/.VLAANDEREN, which is open to all trademarks worldwide. The original Sunrise period was limited to EU and Benelux trademarks, so this will be of interest to would-be registrants who were excluded in the first round.

    As always, feel free to contact us with questions at CLS-CORSEARCHDOMAINS@wolterskluwer.com.

     Contents

    1. New gTLDs Launched/Announced
    2. United TLD (Rightside Registry) –.FORSALE, .DEGREE, .GIVES, and .RIP
    3. Minds + Machines –.CASA, .WORK, and .YOGA
    4. .BRUSSELS/.VLAANDEREN– Additional TMCH Sunrise Period
    5. Radix Registry (CentralNic) –.SPACE
    6. MPML – Minds + Machines
    7. Radix Registry – Name Collision Release for .WEBSITE, .PRESS, and .HOST
    8. Starting Dot – NXD Update for .ARCHI and .BIO
    9. .RIO – New Sunrise Period Announced
    10. .VERSICHERUNG – Premium Domain Auction
    11. .BERLIN– Release of Street Names
    12. New gTLDs Currently Running
    13. Closing Soon
    14. New gTLDs Delegated
    15. New gTLDs Signed
    16. Most Popular New gTLDs

    New gTLDs Launched/Announced

     United TLD (Rightside Registry) – .FORSALE, .DEGREE, .GIVES and .RIP

    Registry operator United TLD Holdco, Ltd has announced the launch schedule for the next of its new gTLDs, .FORSALE, .DEGREE, .GIVES, and .RIPas follows:

    New gTLD Sunrise Sunrise Type Early Access Program General Availability
    .DEGREE 04-Nov-14 to 03-Jan-15 End Date Sunrise (not first-come, first- served) 07-Jan-15 to 14-Jan-15 14-Jan-15
    .GIVES 04-Nov-14 to 03-Jan-15 07-Jan-15 to 14-Jan-15 14-Jan-15
    .FORSALE 11-Nov-14 to 10-Jan-15 14-Jan-15 to 21-Jan-15 21-Jan-15
    .RIP 18-Nov-14 to 17-Jan-15 21-Jan-15 to 28-Jan-15 28-Jan-15

     

    During the Sunrise Phase, trademark rights holders may register their domain names provided that the term applied for is in the TMCH, with multiple applications for the same domain resulting in an auction. The initial term of registration for a domain is one year.

    Please note that there will not be a Landrush Phase for these TLDs, but an Early Access Program with domains available to all, followed by General Availability wherein domains will also be available to register on a first-come, first-served basis.

    During EAP and General Availability, domains may be registered for 1–10 years.

    IDNs are available in English, Spanish, and French.

    Regulated TLDs

    Please note that United TLD classes .DEGREE and .GIVES as “Regulated” TLDs.

    Safeguards for Regulated TLDs:

    Registrants are required to comply with all applicable laws, including those that relate to privacy, data collection, consumer protection (including in relation to misleading and deceptive conduct), fair lending, debt collection, organic farming, disclosure of data, and financial disclosures. Additionally, if a Registrant collects and maintains sensitive health and financial data, they must implement reasonable and appropriate security measures commensurate with the offering of those services, as defined by applicable law.

    Rightside’s Registration Terms and Conditions may be viewed in full at: http://rightside.co/policies/Rightside_Registration_Terms.pdf

     Minds + Machines – .CASA, .WORK and .YOGA

    Registry operator Minds + Machines has announced the launch of its new gTLDs .CASA

    (the Italian, Spanish, and Romanian word for “house,” which might be of interest for those involved with architecture, design, building, cooking and entertaining, and home improvement), .WORK, and .YOGA as follows:

    New gTLD Sunrise Sunrise Type Landrush General Availability
    .CASA 05-Nov-14 to 05-Jan-15 End Date Sunrise (not first-come, first-served) 14-Jan-15 to 28-Jan-15 10-Feb-15
    .WORK 05-Nov-14 to 05-Jan-15 N/A 10-Feb-15
    .YOGA 05-Nov-14 to 05-Jan-15 N/A 17-Feb-15

     

    During the Sunrise period trademark rights holders may register their domain names, provided that the term applied for is in the TMCH, with multiple applications for the same domain resulting in an auction.

    The .CASA Landrush phase will also be End-Date, with multiple applications for the same domain resulting in an auction. Neither .WORK nor .YOGA currently plan Landrush phases.

    IDNs are available as follows:

    .CASA: Spanish, Portuguese, Italian

    .WORK: Spanish, German, French

    .YOGA: Spanish, German, French

    .BRUSSELS/.VLAANDEREN – Additional TMCH Sunrise Period

    The TMCH Sunrise phase for .BRUSSELS and .VLAANDEREN, which ran from 1 September to 1 October 2014, was limited to EU and Benelux trademarks. Registry operator DNS Belgium has now decided to run an additional TMCH Sunrise phase, which is open to all trademarks worldwide for both TLDs. This supplementary phase will run in parallel with the eID (Private Individuals) phase from 13 November to 15 December 2014 and prior to Landrush and General Availability.

    Registrations will be available on a first-come, first-served basis.

     Radix Registry (CentralNic) –.SPACE

    Radix Registry has announced the launch schedule for its new gTLD .SPACE, which might be of interest for self-starters, freelancers, home-based businesses, and hobbyists as follows:

    Sunrise Sunrise Type Landrush General Availability
    17-Nov-14 to 16-Jan-15 End Date Sunrise (not first-come, first-served) 19-Jan-15 to 26-Jan-15 28-Jan-15

     

    During the Sunrise Phase, trademark rights holders may register their domain names, provided that the term applied for is in the TMCH, with multiple applications for the same domain resulting in an auction.

    Domains registered under Landrush are available to everyone with multiple applications for the same domain resulting in an auction and domains will be available to all on a first-come, first-served basis under General Availability. Please note that proxy registrations are not supported in the Sunrise and Landrush Phases. Domains can be registered for periods of from 1–10 years and IDNs are not supported.

    MPML – Minds + Machines

    Registry operator Minds + Machines is to launch its own “MPML”, which stands for Minds + Machines’ Protected Marks List. MPML will be available on a first-come, first-served basis on Tuesday, 25 November 2014.

    As with Donuts and Rightside Registry’s DPML blocks, MPML will provide brand owners with the opportunity to protect their TMCH-registered trademarks by blocking those names, or such variation as allowed by the rules of the TMCH, across those current and future TLDs for which Minds + Machines is the official registry operator, at a significantly reduced cost. Brands that have eligible trademarks and a valid SMD may purchase an MPML block.

    Domains must:

    • comprise at least three characters (one- and two-character domains are not currently eligible);
    • match a TMCH-compliant SMD file;
    • not already be entered in the MPML list of names; and
    • not be on any of the lists of names mandated by ICANN to be blocked in the M+M-ICANN registry agreement.

    The MPML covers all TLDs where M+M is the official registry. This list will expand, but currently includes the following TLDs:

    .ABOGADO

    .BEER

    .CASA

    .COOKING

    .COUNTRY

    .FASHION

    .FISHING

    .FIT

    .GARDEN

    .HORSE

    .LAW

    .RODEO

    .SURF

    .VODKA

    .WEDDING

    .WORK

    .YOGA

    .购物 (“Shopping” in Chinese)

    Most new TLDs added to M+M’s gTLD portfolio will be added to the MPML TLD list as well as others that are supported by M+M. (The list will be updated at www.mm-registry.com)

    Premium names are covered and the MPML subscription fee is the same as for non-premium names.

    As with the Donuts and Rightside DPML, an eligible trademark holder with a valid SMD from the TMCH wanting to apply for or register their name in any M+M TLD may override an MPML

    Domains for a TLD which have not been renewed and are past the appropriate grace periods may be added to an existing MPML subscription (upon the request of the MPML holder).

    MPML subscriptions are available for either five or 10 years.

    An MPML block will be applied to those TLDs which have already finished their respective Sunrise and/or Landrush periods, however, existing valid registrations would not be replaced in these TLDs and existing registrations held by subscribers will remain intact.

    The following domains will be excluded from an MPML block:

    • Registry-reserved names
    • ICANN Blocked Names
    • Previously registered domains
    • Names already on the MPML

    Please note that trademarks should remain current in the TMCH throughout the life of the MPML block.

    It is possible to purchase a block for ICANN Collision names.

    Radix Registry – Name Collision Release for .WEBSITE, .PRESS, and .HOST

    Radix Registry has announced it intends to make those domains that were not available for registration during Landrush and General Availability, due to their being on ICANN’s Name Collision Block List, available for registration on a first-come, first-served basis on Wednesday 26November 2014.

    Some names from the Name Collision List will be priced at a premium and some may be reserved by the registry.

    Sunrise Domains

    Note that domain names present in the block lists that were registered during Sunrise periods and which are currently on “serverHold,” will be activated prior to the release. The expiry dates of these domains will be amended so that they expire on the anniversary of their activation, rather than the anniversary of their initial allocation.

    Starting Dot – NXD Update for .ARCHI and .BIO

    Registry operator Starting Dot has also announced that the “serverHold” status for those registered domains which are on the Name Collision List will be removed and all NXD interruptions will be removed, so that all registered domains with valid name server settings will be active in the DNS as follows:

     .ARCHI: 17 November 2014

    .BIO: 19 November 2014

    .RIO – New Sunrise Period Announced

    Registry back-end operator NIC.br has announced that further to the previous cancellation of the Sunrise period earlier this year pending policy update, a new launch schedule for the geoTLD .RIO will now take place as follows:

    Sunrise Sunrise Type General Availability
    05-Dec-15 to 04-Jan-15 Start Date Sunrise (first-come, first-served) 05-Jan-15

     

    During the Sunrise period, holders of Brazilian trademarks registered in the TMCH may register their domains on a first-come, first-served basis. Under both Sunrise and General Availability, the .RIO domain owner needs to be either:

    • a legal entity incorporated in Brazil, with headquarters, branch, franchisee, or licensee located in the city of Rio de Janeiro, with an active record in “Cadastro Nacional das Pessoas Jurídicas – CNPJ/MF” of the Finance Ministry

    • an individual with fixed address in the city of Rio de Janeiro, with an active record in “Cadastro das Pessoas Físicas – CPF/MF” of the Finance Ministry

    Although proxies are not possible, if a US company, for example, has a BR trademark registered to the US company, they may apply in the name of their Rio branch office, using the BR mark—that is, the owner of the mark does not have to exactly match the company at the Rio address, provided they are both part of the same company. The registry might ask for some proof of relationship between the companies depending on what is on the trademark record.

    Domains must also meet the following requirements:

    • be widely known in the city of Rio de Janeiro as being associated with the legal entity or individual, either being its own name or one of its services, products, or brands;
    • must not make reference to unlawful activities;
    • must not be visually confusing with existing .RIO domains or a reserved name, which is defined by not using the character “-” (dash) in the domain name and considering letters with tildes confusing with the same letter with no tilde, unless the registrant of the potentially confusing name is the same owner of the existing domain registration.

    .VERSICHERUNG – Premium Domain Auction

    Registry operator dotversicherung-registry GmbH is currently running an auction of around 2,000 premium .VERSICHERUNG domains. The full list of names is available at auktion.dotversicherung.de and prices start from EUR 1.

    The auction runs until 9 December 2014 and includes names such as AUTOMOBIL.VERSICHERUNG and DIREKTE.VERSICHERUNG.

    We remind you that eligible registrants for domains under this TLD are based in the countries of Austria, Germany, Liechtenstein, and Switzerland and are in detail:

    - Governments

    - Governmental organizations regulating the insurance industry

    - Organizations and individuals (sole proprietors) that are recognized and registered members of the insurance industry community:

    - Primary insurers, reinsurers, and social insurers with an authorization within the legal framework for
    the insurance industry in the respective countries

    - Insurance agents and insurance intermediaries with an authorization within the legal framework for
    the insurance industry in the respective countries

    - registered associations of the insurance industry at an official public register

    - educational institutions of the insurance industry

    - service providers of the insurance industry

    Upon registration of a .VERSICHERUNG domain, the registrant’s affiliation to the insurance industry is checked immediately. Furthermore, the content of websites for .VERSICHERUNG domains must include insurance-related topics and must be active within 6 months; using for email purposes is sufficient.

    Registrants who collect and maintain sensitive health and financial data must implement reasonable and appropriate security measures commensurate with the offering of those services, as defined by applicable law.

     .BERLIN – Release of Street Names

    Registry operator dotBERLIN GmbH & Co. KG has announced it will make over 16,000 domains with street and place names such as HAUPTSTRASSE.BERLIN, BUNDESALLEE.BERLIN, and MÜNZSTRASSE.BERLIN available for registration on 9 December 2014. The list of domains is available at: https://www.dotberlin.de/sites/dotberlin.de/files/dokumente/strassen-domains-berlin.pdf)

    It is a requirement that the domain Owner/Admin Contact must have an address in Berlin and a Proxy/Privacy is allowed for this purpose. It is also required that domains should be in use within 12 months of registration, with the content related to eligibility.

     

    New gTLDs Currently Running

     

    New geoTLD .NYC, for New Yorkers, has been featuring in the news this week with an article at domainnews.com. More than 52,000 domains have been registered in the first month since General Availability, exceeding the number of .LONDON domains, where there are only 49,560 registrations.

    Approximately half of the registrations have been registered to individuals with the other half registered to businesses.

    .NYC domains are only available for those with a local presence in the City of New York.

    The full article can be found at:

    http://www.domainnews.com/more-than-52-000-nyc-domain-names-registered-in-the-first-month.html

    Meanwhile, .XYZ remains in first position of the top new gTLDs by volume with 706,634 domains registered to date, while .REALTOR has shot into fourth position with 83,929 domains registered. The total number of new gTLDs registered now stands at 3,161,516 (Source: http://ntldstats.com).

     Closing Soon

     

    New gTLD Launch Phase Closing Date
    TOP Sunrise 15-Nov-14
    موقع xn--4gbrim – Arabic for site Sunrise 17-Nov-14
    москва (xn--80adxhks) – Russian for “Moscow/ moskva” Landrush 18-Nov-14
    MOSCOW Landrush 18-Nov-14
    GAL Sunrise/Landrush 18-Nov-14
    EUS Sunrise/Landrush 18-Nov-14
    GENT Limited Registration 19-Nov-14
    TATAR Limited Registration 25-Nov-14
    LTDA Sunrise 28-Nov-14
    商标 (xn--czr694b) – Chinese for “trademark” Landrush 29-Nov-14
    IMMO Sunrise 29-Nov-14
    PIZZA Sunrise 29-Nov-14
    BUSINESS Sunrise 29-Nov-14
    NETWORK Sunrise 29-Nov-14
    AUCTION Sunrise 29-Nov-14
    SOFTWARE Sunrise 29-Nov-14

     

    New gTLDs Delegated

     

    Four additional new gTLDs from ICANN’s New gTLD Program have recently been delegated, taking the total to 430:

    Date of Delegation TLD Applicant
    05-Nov-14 .SYDNEY State of New South Wales, Department of Premier and Cabinet
    05-Nov-14 .BLOOMBERG Bloomberg IP Holdings LLC
    01-Nov-14 .ENERGY Binky Birch, LLC (Donuts) (TBC at IANA)
    01-Nov-14 .DELIVERY Steel Station, LLC (Donuts) (TBC at IANA)

    The complete list of new gTLDs delegated to date is available at: http://newgtlds.icann.org/en/program-status/delegated-strings.

     

    New gTLDs Signed

     

    The following new gTLD Registry operators have recently entered into a Registry Agreement with ICANN, under which they will operate their new gTLDs:

    New gTLD Registry Operator Date
    .DESIGN Top Level Design, LLC 07-Nov-14
    .FANS Asiamix Digital Limited 07-Nov-14
    .FIT Minds + Machines Group Limited 07-Nov-14
    .KINDER Ferrero Trading Lux S.A. 07-Nov-14
    .KYOTO Academic Institution: Kyoto Jyoho Gakuen 07-Nov-14
    .LOTTE Lotte Holdings Co., Ltd. 07-Nov-14
    .LUPIN LUPIN LIMITED 07-Nov-14
    .MEO PT Comunicacoes S.A. 07-Nov-14
    .MMA MMA IARD 07-Nov-14
    .ONE One.com A/S 07-Nov-14
    .PANERAI Richemont DNS Inc. 07-Nov-14
    .PHILIPS Koninklijke Philips N.V. 07-Nov-14
    .SANDVIKCOROMANT Sandvik AB 07-Nov-14
    .SAPO PT Comunicacoes S.A. 07-Nov-14
    .SBS SPECIAL BROADCASTING SERVICE CORPORATION 07-Nov-14
    .TIRES Dog Edge, LLC (Donuts) 07-Nov-14
    .VIVA Saudi Telecom Company 07-Nov-14
    .XN–KCRX77D1X4A (.飞利浦 – Chinese for Philips) Koninklijke Philips N.V. 07-Nov-14
    .XN–NYQY26A (.健康 – Chinese for healthy (“jian-kang”)) Stable Tone Limited 07-Nov-14
    .ZARA Industria de Diseño Textil, S.A. (INDITEX, S.A.) 07-Nov-14
    .ZUERICH Kanton Zürich (Canton of Zurich) 07-Nov-14
    .HITACHI Hitachi, Ltd. 31-Oct-14
    .NTT NIPPON TELEGRAPH AND TELEPHONE 31-Oct-14
    .REDSTONE Redstone Haute Couture Co., Ltd. 31-Oct-14
    .SAXO Saxo Bank A/S 31-Oct-14
    .SCOR SCOR SE 31-Oct-14
    .BMS Bristol-Myers Squibb Company 30-Oct-14
    .ICE IntercontinentalExchange, Inc. 30-Oct-14
    .ABB ABB Ltd 24-Oct-14
    .AIRTEL Bharti Airtel Limited 24-Oct-14
    .CROWN Crown Equipment Corporation 24-Oct-14
    .DELL Dell Inc. 24-Oct-14
    .HSBC HSBC Holdings PLC 24-Oct-14
    .SENER Sener Ingeniería y Sistemas, S.A. 24-Oct-14
    .XEROX Xerox DNHC LLC 24-Oct-14

     

    So far, a total of 594 Registry Agreements have been signed. The full list of Registry Agreements can be viewed at: http://www.icann.org/en/about/agreements/registries.

    Most Popular new gTLDs

     

    Finally, to help you assess general levels of interest in the new gTLDs, we are including the latest zone file information (from ntldstats.com), which shows how the top 30 registries are performing. Note that .XYZ, .BERLIN, and .OVH gave away significant numbers of names.

    Rank TLD Registry Domains % Share
    1 .xyz XYZ.COM LLC 713,833 22.58%
    2 .berlin dotBERLIN GmbH & Co. KG 153,899 4.87%
    3 .club .CLUB DOMAINS, LLC 136,029 4.30%
    4 .realtor Real Estate Domains LLC 84,985 2.69%
    5 .wang Zodiac Leo Limited 83,167 2.63%
    6 .guru Pioneer Cypress, LLC 76,126 2.41%
    7 .nyc City Of New York 57,306 1.81%
    8 .ovh OVH SAS 54,560 1.73%
    9 .london Dot London Domains Limited 50,271 1.59%
    10 .photography Sugar Glen, LLC 48,122 1.52%
    11 .link Uniregistry, Corp. 47,115 1.49%
    12 .email Spring Madison, LLC 43,953 1.39%
    13 .today Pearl Woods, LLC 41,575 1.32%
    14 .公司 (xn--55qx5d) China Internet Network Information Center 38,303 1.21%
    15 .在线 (xn--3ds443g) TLD REGISTRY LIMITED 36,226 1.15%
    16 .company Silver Avenue, LLC 33,284 1.05%
    17 .tips Corn Willow, LLC 32,545 1.03%
    18 .solutions Silver Cover, LLC 29,553 0.93%
    19 .tokyo GMO Registry, Inc. 26,598 0.84%
    20 .网址 (xn--ses554g) HU YI GLOBAL INFORMATION RESOURCES 26,585 0.84%
    21 .网络 (xn--io0a7i) China Internet Network Information Center 26,539 0.84%
    22 .center Tin Mill, LLC 25,966 0.82%
    23 .expert Magic Pass, LLC 24,501 0.77%
    24 .bayern Bayern Connect GmbH 24,195 0.77%
    25 .technology Auburn Falls, LLC 21,625 0.68%
    26 .rocks Rightside Registry 20,631 0.65%
    27 .directory Extra Madison, LLC 20,126 0.64%
    28 .koeln NetCologne Gesellschaft 19,704 0.62%
    29 .hamburg Hamburg Top-Level-Domain GmbH 19,527 0.62%
    30 .ninja Rightside Registry 18,876 0.60%