Written by Nathalie Dreyfus19/12/2013 
On November 28, 2013, the Court of First Instance of Paris has declared null and void the trademark Vente-privée.com on the ground that it was a common noun.
L’Express interviewed Nathalie who commented on the decision.
More information on the subject here (French article): link
Written by Nathalie Dreyfus12/12/2013 
New gTLDs: Donuts Sunrises
The program continues and after the launch of 7 new gTLDs this week, Donuts Inc announced 7 new strings for December, 10. As a reminder, the different phases of the program are as follows:
– Sunrise from 26 November 2013 to 24 January 2014 : the new gTLDs offered are .BIKE, .CLOTHING, .GURU, .HOLDINGS, .PLUMBING, .SINGLES and .VENTURES;
– Sunrise from 3 December 2013 to 31 January 2014 : the new gTLDs available are: .CAMERA, .EQUIPMENT, .ESTATE, .GALLERY, .GRAPHICS, .LIGHTING and .PHOTOGRAPHY;
– Sunrise from 10 December 2013 to 7 February 2014: the 7 new gTLDs will be .CONTRACTORS, .CONSTRUCTION, .DIRECTORY, .KITCHEN, .LAND, .TODAY and .TECHNOLOGY.
To participate in the Sunrise phase, it is mandatory to have a registered trademark in the Trademark Clearinghouse (TMCH) and corresponding SMD files.
Donuts will accept registrations of domain names blocked by ICANN due to domain name collisions. These domain names will only be activated and used once the technical tests are finalised by ICANN.
Please find the complete list of the second-level domains blocked by ICANN on the following link:
http://newgtlds.icann.org/en/announcements-and-media/announcement-2-17nov13-en
During one week after each Sunrise, new gTLDs will be available on a “First-Come, First-Served” basis. The application fee for this period will be declining as per weekdays. Some of the Premium names cannot be registered.
As from the 5th, 12th or 19th February 2014 (depending on the starting date of the Sunrise), names will be available to everyone on a “First-Come, First-Served” basis.
New gTLDs: . みんな, the first and only Japanese new gTLD
Google schedules to launch shortly a Sunrise for its first new gTLD, the Japanese IDN みんな(mee-nuh) which means “everybody”.
New gTLDs: Uniregistry will launch .SEXY and .TATOO gTLDs
Uniregistry, which applied for the gTLDs .GUITARS, .CHRISTMAS and .BLACKFRIDAY, will soon announce a first Sunrise of 60 days for its .SEXY and .TATOO gTLDs.
The registry will propose a mechanism for the protection of rights by blocking TMCH registered trademark.
New gTLDs: imminent launch of .MENU
ARI registry will intend to launch its new gTLD .MENU very soon.
The targets of this new gTLD are restaurants, chefs and every person interested in cookery. As the term “menu” is used in 33 different languages, the gTLD .MENU will gather a large online community throughout the world.
New gTLDs and TMCH : the Trademark Claims Service is updated
The trademark Clearing house is to give an indefinite extension of part of the Trademark Claims Service.
The post-registration alerts to trademark holders will be extended indefinitely whereas the pre-registration warning for the registrant will be sent during the original 90-days period.
Possible registration of .UK for summer 2014
Nominet will soon accept .UK registrations provided that these domain names do not already exist under .CO.UK and .ORG.UK gTLDs.
.CO.UK and .ORG.UK customers will have 5 years to decide whether they want to register their existing domain names in .UK or to keep only the .UK address. In the case where a person holds a .CO.UK and another one an .ORG.UK, the UK name will be offered in priority to the .CO.UK owner.
.DE registry adds a domain name restoration service
Since December 3, 2013, DENIC introduced its domain name restoration service, the RGP or Redemption Grace Period, which will allow domain name owners to recover their expired domain for up to 30 days after its expiry.
This service is available for all second-level domain names in case of their accidental deletion. If no redemption is requested during these 30 days, the domain name will be again available for registration.
Written by Nathalie Dreyfus12/12/2013 On September 30, 2013, a judge awarded Pinterest 7.2 million dollars in damages and legal fees against a Chinese cybersquatter.
Qian Jin had bought more than 100 domain names including pinterests.com, pimterest.com and pinterost.com and was using them as domain parking.
The judge proclaimed that the infringement was “willful and serial” and stated that “there is no indication of good faith mistake or excusable neglect justifying defendant’s failure to respond or otherwise defend against plaintiff’s allegations”.
Pinterest also took possession of the domain names.
Written by Nathalie Dreyfus12/12/2013 On May 17, 2013, the Rwandan Government submitted its request to join the Protocol relating to the Madrid Agreement concerning the International Registration of Marks (known as the “Madrid Protocol”).
The Madrid Protocol became effective with respect to Rwanda on August 17, 2013.
Article 290 of Law n° 31/2009 of 26/10/2009 on the Protection of Intellectual Property in Rwanda states that:
This accession favors trademarks holders who might include Republic of Rwanda when depositing an international mark or extending existing international registrations to Rwanda.
Written by Nathalie Dreyfus05/12/2013 The program of new generic strings known as New gTLDs (New Generic Top Level Domain Names), such as <.PARIS>, <.BOOKS>, <.SHOP>, <.LOVE> and several hundred others, has entered its final phase. However, the risk of domain name collisions, taken very seriously by ICANN, is delaying the activation of these new strings awaited with such anticipation by Internet users and rights holders alike. The management of these risks is imposing new constraints on the reservation of second level domains and de facto forcing changes to the reservation of domain names in the new strings.
Reminder
A domain name comprises a radical and a suffix, which is also known as a string. The suffix is the top level domain name (TLD) and the radical is the second level domain name (SLD).
Example : dreyfus.fr -> level2.level1 -> SLD.TLD
What is domain name collision?
Name Collision is a problem of nomenclature that could occur in the domain name system (DNS), between the new strings and those used in a private domain name system. In reality, these names are used in different protocols on the Internet and may give rise to confusion. An Internet enquiry could thereby be directed to a non-designated site.
The risks
The challenge
What is at stake regarding Name Collision is nothing less than public confidence in the DNS system and the Internet itself.
ICANN’s position
Taking very seriously the risks that could be caused by name collisions, ICANN asked IAS Global Advisors LLC to carry out a study to analyze the risks relating to each future domain name, both at top level (gTLD) and also second level (SLD)..
The methodology of the risk analysis
On August 5 2013, ICANN published a study on Name Collisions (link: http://www.icann.org/en/about/staff/security/ssr/name-collision-02aug13-en.pdf). This study evaluated string categories according to data observed in the DNS root servers.
It is worth remembering that the DNS root servers are the thirteen root servers of the Internet’s Domain Name System that come under the authority of ICANN. They respond to requests concerning top level domain names (TLDs) and redirect them towards the DNS server of the relevant top level. The root server data were collected on the “Day in the life of the internet” (DITL), an initiative run by the Domain Name System Operations Analysis and Research Center alias DNS-OARC).
The study analyzed two types of data:
Based on this study ICANN was able to take measures that aimed to reduce the risk of name collision. These measures affect both first level and second level domains.
Name Collision & generic top level domains (gTLDs)
Risk classification : L’étude sur la collision des noms identifie trois catégories d’extension en fonction de leurs risques potentiels de collision dans l’espace de noms.
Measures taken to reduce risks:
Name Collision & second level domains (SLDs)
In order to activate second level domain names (SLDs), the registry operators of new strings must first receive their Collision Occurrence Assessment. According to the results of this evaluation, personalized risk-reduction measures to avoid collision will be required of registry operators for each new gTLD. These measures can include:
The specific context for the management of the consequences of the collision-risk evaluation has not yet been defined. ICANN hopes to finalize this before the end of March 2014. As a result, the activation of SLDs has yet to be tabled.
However, if the activation of SLDs for new gTLDs still requires patience, the same is not true of their delegation. On November 17 2013, ICANN published its report on the “APDs” or “Alternate Path to Delegation Reports” ; http://newgtlds.icann.org/en/announcements-and-media/announcement-2-17nov13-en).
– Eligible for the APD.
– Ineligible for the APD.
As a result, it is now vital for rights holders to check the reservation possibilities for their second level domain names in relation to each new string.
We can offer you a personalized study according to the strategy defined for the reservation of domain names in the new strings.
Written by Nathalie Dreyfus05/12/2013 
The 13th edition of the ‘Trophées du Droit’ (legal industry awards) was held on 28 November in an award ceremony for the best legal firms which gathered over 950 figures involved in the legal profession(1)(2).
Dreyfus was recognized this year in the category Management of legal firms and received the Special Mention:Trademark Attorney : trademarks(3).
In previous years, the firm had already been awarded a Silver Trophy in the same category of Trademark Attorney but was also recognized for its performance as an emerging team of specialists.
We would like to thank our clients for their support without which we would not have received this special award.
(1) Press release available here.
(2) Laureates list : http://www.tropheesdudroit.fr/laureats-2-aa3-1
(2) http://business.lesechos.fr/directions-financieres/enjeux/0203155708234-les-meilleurs-cabinets-d-affaires-a-l-honneur-57420.php
Written by Nathalie Dreyfus28/11/2013 
In October 2013, Nathalie Dreyfus was interviewed by James Nurton, editor of Managing Intellectual Property on the issue of the new gTLDs, recent developments in France and the start of her law firm.
With the current wave of new gTLDs that have recently been launched, Nathalie points out that these new strings are a “revolution on the Internet”, particularly because they now convey meaning. She illustrates the point by citing a recent UDRP case which examined whether to take the string into consideration when comparing similarities between the trademark and the name. Nathalie added that the Trademark Clearinghouse “can also be a good thing” in the sense that rights holders can more easily warn offenders in the case of litigation over names, and also benefit from this service by using Donuts’ Domains Protected Marks List (DPML). In this way they control the reservation of domain names identical to their trademarks.
Concerning recent developments in France, Nathalie points out that since 2011, cases have been heard and examined more rapidly by the courts, but that there are “fewer oral pleadings and fewer specialist judges for Intellectual Property”. Cases are also judged “on their own merits, which is very favourable for trademark owners”.
Nathalie completes her observations by highlighting the fact that since the offices of the INPI were relocated outside Paris, an online service for trademark renewal would be a welcome addition in 2014 since specific trips have to be made to these offices and there is no postal address anywhere in the capital.
Nathalie then outlined the reasons for starting her law firm. Ten years ago she noticed that many Companies were concerned by the protection of their trademarks “in countries where they didn’t even have a business” whereas, in the case of their domain names, these were visible right around the world. Growing ever since, the firm now employs over 15 people and created a platform entitled Dreyfus IPweb to “consolidate and summarize all the information available to [her] clients”.
Nathalie Dreyfus finished the interview by stating that “domain names are becoming as important as trademarks” but that they will never replace them since the Law requires that a trademark be registered if rights are to be defended on the Internet, not only with domain names but also on social networks. Trademarks are “tools for actions – the king of the distinctive sign”.
The full interview (in English) is available here.
Written by Nathalie Dreyfus28/11/2013 In order to defend trademark rights more effectively, the additional solution provided by the Abused DNL Service has been set up within the TMCH. This service is now operational.
The Abused DNL Service: what does it offer?
This is a system that allows a trademark already registered in the TMCH to be linked to a maximum of 50 domain names that have already been disputed (abused labels) that concern the mark that has in fact been integrated into the TMCH.
These abused labels will then benefit from a more extensive Trademark Claims Service (TCS) during the period when new gTLDs are opened to the public. As a reminder, the TCS is a warning system that notifies Internet users registering domain names of the existence of prior rights and alerts rights holders in the event of registration of domain names identical to their trademarks. The TCS is activated for all marks registered with the TMCH. The abused labels will expand the system of automatic alerts to include domain names that suffered previous infringements in other TLDs.
Who can benefit from the Abused DNL Service?
The prerequisite is to have registered trademarks with the TMCH. The eligibility criteria for obtaining this complementary protection are, however, restrictive:
If a decision involves several domain names, the mark holder can choose to include one, several or all the names affected by the decision.
As an example:
Lego Juris A/S. registered with the TCMH the Chinese mark LEGO n° 75682 which had been duly validated.
Lego won a case before the UDRP, OMPI litigation n° D2013-0683, concerning the domain name <legobox.net>.
The Chinese mark LEGO n° 75682 was cited in the decision.
Lego will therefore be able to add the term “legobox” as a label to its Chinese mark LEGO n° 75682 registered in the TMCH.
Which documents must be provided?
– the name of the arbitration centre that gave the ruling
– the case number
– the language used in the case
– the domain name(s) involved without the string
– a copy of the decision if it cannot be located in the online database
– a copy of the decision
– the country in which the decision was rendered
– the name of the jurisdiction that gave the ruling
– the case reference number
– the language used in the case
– the domain name(s) involved without the string
How useful is this new service?
The usefulness of this service, though addressing real issues, remains limited. In reality, the abused labels registered only trigger the TMCH notification system, the Trademark Claims Service, once the names have been registered; no block will be applied if the mark is merely registered with the TMCH.
Accordingly, during the 90 days after the new string has been opened to the public, the applicant may receive notification warning him that the name he wishes to reserve is likely to infringe the trademark rights of a third party, and a reference to litigation will be included in the notification. The applicant is then free to pursue the registration or not, being fully informed of the violation of the trademark rights of a third party that has already been recognized either inside or outside the courts.
Equally, during the 90 days after the new string has been opened to the public, the rights holder will also receive notification informing him of a potential case of cybersquatting if the applicant confirms the registration of the name despite the warning received.
The system does not allow for the registration of domain names in the new strings but could nevertheless have a dissuasive effect.
Length of subscription of domain names (labels)
The length of registration of contested domain names (abused label) in the TMCH is linked to the length of subscription of the trademark to which they are associated.
If the mark has been registered for several years, the subscription to the abused labels will be identical to that of the trademark. They will expire on the same date.
As an example, if the mark is registered for a duration of 3 years as of 1st January 2014, and a contested domain name associated with this mark is registered in March 2014, it will only be registered until January 2017, at which time the registration of the mark must be extended in the TMCH.
What costs are involved?
The anticipated costs depend on the nature of the decision, whether based on a UDRP ruling or a judicial decision.
A 50$ USD fee per decision + 1$ USD per domain name (label) registered for one year.
An additional fee of 25$ USD will be required when the mark’s subscription is renewed in the TMCH if the label has only been registered for one year.
A 150$ USD fee per decision + 1$ USD per domain name (label) registered for one year.
An additional fee of 25$ USD will be required when the mark’s subscription is renewed in the TMCH if the label has only been registered for one year.
We are at your disposal should you wish to explore the opportunity to make use of this complementary system.
Written by Nathalie Dreyfus28/11/2013 شبكة . (.SHABAKA)
The Sunrise phase for شبكة. (.SHABAKA), the generic term for “the Internet”, is still in progress. Domain names under this new gTLD are available in Arabic script only.
As a reminder, the different phases are as followed:
To participate in the Sunrise phase, it is mandatory to have a registered trademark in the Trademark Clearinghouse (TMCH) and corresponding SMD files.
Donuts Sunrises
Donuts Inc program was partly known. It is now confirmed that 7 new gTLDs will be added to the first 7 already announced for the Sunrise. The different phases of the program are as followed:
– Sunrise from 26 November 2013 to 24 January 2014 : the new gTLDs offered will be .BIKE, .CLOTHING, .GURU, .HOLDINGS, .PLUMBING, .SINGLES and .VENTURES
– Sunrise from 3 December 2013 to 31 January 2014 : the new gTLDs available will be .CAMERA, .EQUIPMENT, .ESTATE, .GALLERY, .GRAPHICS, .LIGHTING and .PHOTOGRAPHY .
From 29 January to 4 February 2014, new gTLDs will be available on a “First-Come, First-Serve” basis. EAP application fees will vary in price according to the day of the week. It will not be possible to register Premium names.
From 5 February or 12 February 2014 (depending on the starting date of the Sunrise), names will be available to everyone on a “First-Come, First-Serve” basis.
.XYZ and .COLLEGE : Pre-Sunrise Premium names auction
Auction sales announced by Namejet and XYZ.COM registry for 40 domain names including new gTLDs .XYZ and .COLLEGE are still in progress since their launch on 6 November, and will be closed from 22 November 2013 (for names such as LOANS.COLLEGE or LONDON.XYZ) to 28 February 2014 (for UNDERGRAD.COLLEGE or SCHOLARSHIPS.COLLEGE). The highest bidders will take possession of the domains when they become available after the Sunrise period in 2014.
A full list of domains available under auction can be found at : http://www.namejet.com/featuredauctions/xyz
Minds + Machines launches priority reservations for .BEST, .CASA, .CEO, .COOKING and .HORSE
Minds + Machines announced a Priority Reservation program. It is possible to make a domain name reservation under new gTLDs .BEST, .CASA, .CEO, .COOKING and .HORSE before they are available during the General Availability period.
However, names registered during the Sunrise period are still priority. Names subjected to priority reservations corresponding to registered names in the Sunrise period will be refunded.
Registration prices will depend on the chosen domain name.
Written by Nathalie Dreyfus21/11/2013 The Chilean registry responsible for .CL has recently announced changes that will take place for registrations and dispute resolution that will bring them into line with current global practices.
These changes will take effect from December 1st 2013 and include three major modifications:
The arbitration will be a procedure conducted exclusively via Internet and in Spanish. The arbitrator can, however, accept documents in other languages, and request a translation if necessary. Once the arbitrator has gathered all the evidence provided by the parties involved in the dispute and has declared that no further evidence will be admitted, no other document may be presented before the final decision unless the arbitrator himself makes the specific request to clarify a point of contention.
