April Edition

Episode 2 of The Com Laude Web3 podcast is available now. Subscribe to our YouTube channel, Apple podcasts or Spotify for this month's episode featuring Russ Jacobs Managing Corporate Counsel at Starbucks. In this episode our host, Dietmar Lenden , speaks to Russ about:

• How Starbucks is using blockchain technology;
• How Starbucks fosters community through the use of NFTs; and
• How they protect against IP infringement, and what changes they would like to see in the future.

Whether you're experienced in the world of Web 3.0 or just starting out, our podcast series provides valuable insights and practical tips for managing your digital assets.

Meetings, meetings, meetings?

We have a history stretching back nearly 20 years of attending key meetings in the IP calendar. Several of our team serve on IP association committees or take leadership positions. We do this to understand how domains fit into the landscape of IP rights protection and, of course, to meet with clients. As experts, we are asked to provide a perspective on developments at the intersection of trademarks and domain names often with a focus on ICANN.

This year, members of the Com Laude team will be at the meetings of MARQUES, CITMA, INTA and a handful of other law firm or commercial industry conferences. This is in addition to attending four ICANN meetings a year where we voice the concerns of our clients on how domain name policy impacts on trademarks. There will be six of us in Singapore at INTA’s Annual Meeting from 16 – 20 May 2023. We have a meeting space and would be delighted to catch up with you or a colleague.

New gTLDs coming soon, no doubt

At last month’s ICANN meeting in Cancun, the ICANN Board voted to proceed with the next round of new gTLDs, earmarking an initial $9m for work up until the end of October. An Implementation Recommendation Team is being formed from volunteers who will work with staff to establish how the policy recommendations, developed over 5 years by the Subsequent Procedures (SubPro) working group, will be practically implemented, i.e. building the application mechanism, processes and procedures. There are 38 recommendations from SubsPro across 16 issues that have yet to be resolved. The costs are not finalised nor is the timeline but an update is promised by the Board at the start of August. However, we don’t expect the cost to be anything like the $400k+ that was suggested just before Christmas by the ICANN finance team. This is because the community gave the Board a clear steer that it does not need to build an application system from scratch. We also expect applications to open in 2025, possibly earlier.

Cybersquatting by AI

UDRP cases have been on the rise, with WIPO reporting a 21% increase in 2022, while The Forum and the Czech Arbitration Court experienced increases of 12.5% and 12%, respectively. The uptick can be attributed to several factors, including a surge in phishing, malware, and fraud attacks linked to abusive domain registrations, leading security and legal professionals to take action.?

These attacks are becoming more sophisticated and targeted, utilising new technologies like AI and large language models to craft convincing business compromise emails that are successfully fooling companies and their employees who may be working at home in isolation. Brand owners can no longer ignore this rise in phishing and fraud attacks, and the UDRP, although more than 20 years old, remains a useful and effective weapon in their protective arsenal.

Tim Brown , our Head of Brand Protection says, “Brand owners can’t be complacent. AI-crafted email attacks have absolutely none of the giveaway typos and weird language issues that make phishing easier to spot. Combine this with a typo or homoglyph domain and it’s no wonder we’re busier than we’ve ever been”.

The return of accurate gTLD registrant data?

Will IP professionals ever see an effective replacement to WHOIS? Accurate, up to date registrant information is vital in tackling abusive registrations in gTLDs. Whilst it is good news that we are inching towards a solution, it remains disappointing that one is still a long way off. The ICANN Board has given the green light to staff to develop a pilot system called the Registration Data Request Service (RDRS) to launch in November 2023. RDRS will act as a centralised portal to receive user requests for non-public registration data and pass them on to the relevant registrar.

Regrettably, the decision on whether to provide data will be made by the individual registrar, and any data disclosure will be made outside of the system. The registrar will be expected to record a high-level indication of the outcome. After two years the effectiveness of the RDRS will be assessed and possibly a fuller-functioning System for Standardized Access/Disclosure (SSAD) will be built. It is therefore vital that brand owners submit disclosure requests via the RDRS, even if those requests do not result in very satisfactory disclosure of the data, to avoid the impression that there is no problem with access to registrant data.

Metaverse: hype vs reality

We’ve been supporting our clients with blockchain domain registrations and strategic advice on brand protection in Web3 for two years now. We always strive to emphasise the reality vs the hype. For every enthusiast who loves last month’s Metaverse Fashion Week, there’s a sceptic who points out that the number of Daily Average Users (DAU) in December 2022 to Decentraland was just 7,000. However, it appears that brand owners are no longer sitting on the fence. The total number of trademark applications at the USPTO in 2022 and Q1 of 2023 that mentioned the key term “NFT” was 8,625 (compared to just 27 in 2020). A further 5,942 applications mentioned “Crypto” and 6,685 mentioned “Metaverse”.

Whatever your position, our key strategic recommendation is to secure your key marks as blockchain domains because you really don’t need a third party taking your names and adding them to crypto wallets when enforcement is so hard.

Pastures new

Are you looking for a new role at the end of this year that brings with it relocation to sunny California, a high six-figure salary and monthly business class travel? ICANN is embarking on a search for a new CEO following the resignation of Goran Marby after a six-year tenure. A job description will be published by the end of June. However, you’ll have stiff competition. We hope that the Interim CEO, Sally Costerton , formerly the SVP of Global Stakeholder Engagement, will apply. From what we saw at ICANN 76 last month, she’s already formed an effective double act with ICANN’s new Chair, Tripti Sinha, who by day is the Chief Technology Officer at the University of Maryland.