Monday, March 31, 2014

First Generic Top Level Domain Decision - Canyon Bicycles Wins Dispute Over Canyon.Bike Domain

Canyon Ultimate CF MTBOn 5 February 2014 Rob van Eck, a Dutch cyclist and web designer in the cycling industry, registered a new generic top level domain ("gTLD"),, via domain registrar GoDaddy and parked it using the registrar’s own parking service where it featured sponsored listings related to the domain’s keyword (including one for “Mountainbikes.”)

Unfortunately for Van Eck, Canyon Bicycles GmBH of Koblenz, Germany, filed a complaint regarding his registration of the new gTLD via the WIPO Arbitration and Mediation Center, which is then forwarded to the registrar for verification in connection with the disputed domain name. This case is notable because it is the first UDRP concerning a gTLD.


Canyon Bicycles is an international manufacturer of racing, mountain, and triathlon bicycles and has been operating under the name since 2001 (the company itself was founded in 1985 under a different name). Canyon Bicycles operates in 16 countries, including the Netherlands. Canyon currently has ownership of numerous trade marks for the term “Canyon” in relation to bicycles (including International Trademark (word) No. 687879, CANYON, registered on January 2, 1998, for goods and services in classes 11 and 12.)

Canyon asserted that the domain name is similar to their trade mark, and so would lead to confusion, that Van Eck had no rights or legitimate interests in the domain name, and that the disputed domain name is being used in bad faith.

Canyon argued that Van Eck is knowledgeable with regard to the Internet and has exhibited interest and special knowledge in cycling, citing the respondent’s professional and social media websites showing involvement in both Internet and cycling-related projects, such as the design of bicycle wheel decals and the creation of an online portal for bicycle shops.

Canyon further noted that the domain name incorporates the CANYON trademark in its entirety, and added that the suffix of a domain name is irrelevant when assessing similarity or identity, but also submits that the “.bike” extension further reinforces the similarity to their trade mark and core products.

Canyon said that the timing of the gTLD registration makes it inconceivable that Van Eck was unaware of Canyon and its trade mark, and that there was no legitimate explanation for the registration other than to mislead users searching for Canyon’s products and services.

Van Eck also made a UDRP rookie error. He wrote to the WIPO Arbitration and Mediation Center on 12 February 2014, in which he inquired as to whether there is a possibility to settle the matter in which “the company pays me for my domain”. This supported the allegation that he had no actual interest in the disputed domain name except to profit from Canyon's goodwill.

Respondent’s Defence

Van Eck’s defence was that he merely registered the domain in order to expand his network and “get in (friendly) contact with Canyon,” curiously adding that many people in the cycling industry are unaware of the new batch of gTLDs that include the “bike” extension, and had registered some domain names in order to “protect companies” from domain squatting. He further noted that the complaint was filed against him before he was able to contact Canyon, and that it is his belief if Canyon went to him directly, they would have “talked about” the disputed domain and he would have relinquished ownership without recourse to the policy. Van Eck notes that he registered the domain with good intentions.

Canyon was successful in its complaint, and the disputed domain name was transferred to them under paragraphs 4(i) of the Policy and 15 of the Rules. This decision emphasises the need to monitor online brand hijacking especially now that new gTLDs have launched.

Thursday, March 20, 2014

Swatch Sues Target Over Watch Designs -and Problems with Designs in Australia

Swatch Light Painting (57940452)Swiss company Swatch Group SA filed a lawsuit against Target, alleging that the US-based discount retailer is illegally selling watches that copy the design of some of Swatch’s offerings, specifically, the “zebra” and “multi-color” watches. Swatch argues that the quality of the products being sold by Target is “inferior” to their version, and that continued sale of which could lead to consumer confusion and negatively impact upon Swatch’s sales.

Swatch alleges that they have advised Target of the alleged infringement, but the retailer continued selling the infringing products. According to the complaint, "by adopting the Zebra Watch trade dress and the Multi-Color Watch trade dress, defendants are unfairly competing [with Swatch].”

Swatch seeks an injunction on Target’s sale of the allegedly infringing products, along with an account of profits, and damages. Target has declined to discuss the case, although company spokesman Evan Lapiska is reported to have stated that Target's policy is "to respect the intellectual property rights of others and we expect the same from our vendors and partners."

Wednesday, March 19, 2014

IAB’s Future of the Cookie Working Group Addresses Privacy and Tracking in a Post-Cookie Environment

For a long time now, majority of what we do online has been governed by the use of HTTP cookies – from tracking user preferences, to remembering browsing histories, and even storing of usernames and passwords. I recall reading an article in PC Mag in 2000, despairing over the ubiquitous use of cookies. Fourteen years later, the use of cookies is endemic. Cookies are useful in compiling long term records of individuals’ activities and identities online, which is a privacy concern regardless of how useful it was for marketing and advertising agencies. It is this concern that has prompted the International Advertising Bureau (IAB)’s Future of the Cookie Working Group to publish a white paper titled ‘Privacy and Tracking in a Post-Cookie World’ (

‘Privacy and Tracking in a Post-Cookie World’ addresses the problems and concerns that have arisen from the use of cookies throughout the years, but focuses more on explaining why their use is no longer needed in the digital environment, followed by a proposal consisting of several alternatives to the traditional http cookie. It is immediately relevant to Australia with the changes to the Privacy Act about to take effect (what happens to cookie-acquired information, especially if it is conveyed offshore?), and relevant to the EU because of proposed EU data protection regulation will impose strict rules on consumer profiling.

Concerns Over Cookies

The IAB has two major reasons as to why the cookie is fast becoming obsolete and is ultimately more problem than they are worth. First is the sheer amount of cookies that are being used by different companies – either they accumulate over time and slow down people’s computers, or people block them entirely, negating their purpose as tracking and database-building tools.

What this means is that the advertisers fail to target potential customers with relevant content, while publishers lose revenue from the potential sales that could have occurred when a relevant ad is served to a visitor.

Additionally, informed consumers are paranoid about cookies. There is an undeniable growing distrust of what data aggregators are doing with personal information. This increased awareness of the data trail that people create online is tempered by an inversely limited understanding of how their private information is used. This leads to many users opting out of tracking altogether (either by means provided by the website, or by blocking cookies at their end).

Monday, March 17, 2014

UK Courts Order Ex-Employees to Hand Over Social Media Accounts to Employer

Linkedin ChocolatesLast year, in the UK, the case of Whitmar Publications v Gamage brought to light the issue of how companies jumped on the social media bandwagon without being prepared for the contingency of what happens when the employees controlling the social media leave. In Whitmar’s case, three former employees started a rival publishing company, allegedly a violation of the no-compete clause in their employment agreements. The former employees then used their access to and control of Whitmar’s membership in various LinkedIn groups as a means of inviting a large number of individuals to a covert launch event for their new company.

According to Whitmar, the three employees have been taking active steps to compete with Whitmar even before the termination of their employment, using Whitmar’s database of customers, taking business cards that belong to the company, and the use of the company’s LinkedIn groups. Whitmar sought an injunction to stop the former employees from using confidential information that belonged to the company, asking for the employees to turn over access to the LinkedIn accounts.

Sunday, March 16, 2014

Intellectual Property Protection for Perfumes

In December 2013, the famous French cosmetics company Lancome sued a man who was in possession of several counterfeit bottles of perfume at an open-air market in France, including a counterfeit of one of Lancome’s high-end bestselling perfumes, Tresor (Treasure). Lancome apparently cited article L. 112-1 of the French Intellectual Property Code (FIPC), which protects “all works of the mind, whatever their kind, form of expression, merit or purpose,” arguing that the resulting fragrance from the perfume expresses the creative input of the author, which thereby entitles it to protection under the law.

Unfortunately for Lancome, the Court of Appeals of Nancy ruled that a perfume is not copyrightable and so is not under the protection of the FIPC. The court explained that a fragrance is a work of technical know-how, and not a work of intellect. Perfume does not come in a tangible form that is identifiable, precise, nor communicable: the smell of perfume cannot be copyrighted because it is simply too subjective to be clearly defined.