Australian Trademarks Lawyer & Attorneys : Nicholas Weston Law Firm : Copyrights, Intellectual Property

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In Facebook, Inc. v. Callverse Pty Ltd, (Case No. DAU2008-0007) an Administrative Panel Decision of the WIPO Arbitration and Mediation Center handed down on 4 June 2008, the Complainant was U.S. company Facebook, Inc. (Facebook) which operates a popular online social networking website at www.facebook.com/ and has five registered trade marks for the word FACEBOOK in Australia, two of which were registered prior to the commencement of this proceeding.

The Respondent, Australian company Callverse Pty Ltd (Callverse), at the material time, operated “an established click-to-call service” that was “launching soon” at the website www.facebook.com.au/

An all Australian Panel comprising John Swinson (Presiding), Warwick Rothnie (the barrister behind the IPWars blog) and James Barker, found for the Complainant on the basis that the three elements enumerated in paragraph 4(a) of Schedule A of the .au Dispute Resolution Policy (auDRP), were satisfied, namely:

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The Managing IP World Intellectual Property Survey 2008, which publishes detailed rankings of the leading firms practising intellectual property in each country, has listed Nicholas Weston for the first time since the firm was founded in 2005.

The firm is ranked in two categories: for Trade Mark Prosecution in Australia and for Trade Marks Contentious in Australia. Rankings are based on surveys of clients and recommendations from clients and other practitioners.

According to Managing IP magazine:

"The World IP Survey is not simply a list of the biggest firms, or a list of those that have the biggest case load or are the oldest. Instead it is a qualitative ranking of the leading firms in each category and reveals which firms are rated by their peers for the strength of their expertise and the depth of their ability to service clients."

The IP Handbook 2008, published by Managing IP, includes full results of the survey, stating:

"Clients noted the thoroughness of the firm's paperwork and "attention to detail" ".

No firm can vote for its own inclusion or purchase a listing in the MIP World Intellectual Property Survey 2008 or the IP Handbook, which lists the leading firms in trade marks prosecution and contentious work in 65 jurisdictions. The survey is described by its publisher as “the world’s most detailed and authoritative survey of the IP market."

Details of the survey methodology can be found HERE

Survey results for Asia can be found HERE .

About Managing IP

Managing Intellectual Property is the leading international magazine for IP owners, with more than 8,000 readers across the globe. About two-thirds of readers are senior in-house counsel in multinational companies.

Published 10 times a year, Managing IP provides news, comment, data and analysis. Managing IP is part of the Euromoney Legal Media Group, with offices in Hong Kong, London and New York.

About Nicholas Weston

Founded in 2005, Nicholas Weston is small but mighty Australian law firm delivering trade marks and other commercial legal services to clients worldwide in core sectors of disputes, technology, and brands.

Each professional is a dual qualified lawyer and registered trade marks attorney. Nicholas Weston claims practical implementation of thought leadership. The firm is located on Collins Street, Melbourne in the historic Assembly Hall.

For further details contact Nick Weston or Lea Lewin.

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As of 1 June 2008, a new and more flexible registrant transfer policy comes into effect, allowing domain name registrants to transfer their domain name licence to another eligible entity for any reason. The new policy has been approved by the Australian domain name administrator .au Domain Administration Ltd (auDA) - the policy authority and industry self-regulatory body for the .au domain space.

Key Features of the New Policy

Exact details and wording of the new policy is not yet available. However, the following key features of the policy are available here and can be summarised as follows:

• .au domain names can not be registered for the sole purpose of resale;
• a 6 month holding period for newly registered .au domain names applies;
• after 6 months domain names may be offered for sale/transfer by any means;
• standard transfer forms will be used for processing transfers; and
• auDA will ask parties for voluntary and confidential disclosure of the sale method and price.

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The Board of the Internet Corporation for Assigned Names and Numbers (ICANN)  has approved a new provider of domain name dispute resolution services. It is the Czech Arbitration Court (CAC) in Prague.

The decision was made at a Special Meeting of the ICANN Board of Directors on 23 January 2008 and has just been released.

ICANN effectively runs the internet and is responsible for policies on the registration of domain names and the resolution of disputes about them.

The significance of the decision is global, in that the ICANN Uniform Dispute Resolution Policy (UDRP) provides that complaints about the ownership and registration of domain names must be brought before ‘one of the administrative – dispute-resolution service providers’ approved by ICANN.

At the present, the approved providers are:

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The Hon. Neil Brown QC has just returned from the US where he delivered a paper outlining the process for the arbitration of disputes over internet domain names under the Uniform Domain Name Dispute Resolution Policy (UDRP). The UDRP scheme essentially deals with complaints by trade mark owners that someone else is trespassing on their trade mark by registering a domain name.

A copy of the paper can be downloaded here.

The paper may be of particular interest to legal practitioners representing clients in proceedings under the UDRP that concern generic Top Level Domains or gTLDs, (eg: .com, .net, .org, .coop, .aero, .biz, .info, .museum, .name, and .pro).

Neil Brown, a contributor to this blog, is a member of the World Intellectual Property Organisation (WIPO) Domain Name Panel and the WIPO Arbitration Centre's List of Neutrals.

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It is a golden rule that all businesses should conduct regular audits of the domain names they have - and those they should have.

In other words, companies should regularly:

• ensure they have all important domain names registered; and
• ensure no-one is making improper use of the company’s business or product names through registering unauthorised domain names.

There are now literally thousands of cases where names have simply been taken, improperly registered as domain names and then used to divert internet traffic to competitors or held hostage until the victim pays up and buys the name back.

And, of course, these cases are in addition to those where the name is used to make money by linking it to a pornography site or a shopping mall selling every imaginable range of goods and services- and some that are unimaginable! That, of course, is a very bad look for your company name to be used in that way.

Just how companies can get into trouble - and get out of it - is shown by two recent cases concerning the ANZ Bank.

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Nicholas Weston, Lawyers & Trade Marks Attorneys is pleased to announce that Professor Mark Davison has joined the firm as a contributor to the Australian Trade Marks Law Blog.

Mark is currently Associate Dean (Undergraduate Studies) at Australia’s Monash University, and the author of several major works relating to intellectual property and competition law. He is the co-author of the third edition of Shanahan’s Australian Law of Trade Mark and Passing Off, the leading reference work on Australian trade mark law and has written The Legal Protection of Databases, a book published in the intellectual property series of Cambridge University Press. He has also published two casebooks dealing with competition law and aspects of consumer protection. In addition to his doctorate on sui generis protection of databases, he has a diploma in Indonesian language and studies and he is the winner of three Australian Research Council large grants.

Besides teaching Contract Law, Intellectual Property, Trade Marks and Commercial Designations and Copyright in the postgraduate and undergraduate courses at Monash, he has taught in various projects in Thailand, Vietnam and Indonesia.

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Nicholas Weston, Lawyers & Trade Marks Attorneys is pleased to announce that The Hon. Neil Brown QC has joined the firm as a contributor to the Australian Trade Marks Law Blog in his capacity as an expert in domain names.

The Hon. Neil Brown, QC is a member of the World Intellectual Property Organisation (WIPO) Arbitration Centre's Domain Name Panel and its List of Neutrals following on from a long and distinguished career in Government and the law. He has been actively involved in Australian politics as a Minister, Shadow Minister, legislator and as a delegate to the United Nations and other international organisations.

Neil has also been appointed to the Panel of Conciliators at the International Centre for the Settlement of Investment Disputes (ICSID) at Washington, USA.

Amongst other positions, Neil has served as:

• Member of Federal Parliament; Commonwealth of Australia, 1969-91;
• Shadow Minister for Communications, 1990-91;
• Shadow Attorney-General, 1988-90;
• Shadow Minister for Justice, 1988-90;
• Shadow Minister for Employment and Industrial Relations, 1985-87;
• Deputy Leader of the Opposition, 1985-87;
• Shadow Minister for Foreign Affairs, 1985-87;
• Minister for Business and Consumer Affairs, Australian Government, 1982;
• Minister for Communications and Minister Assisting the Attorney-General, 1982-83;
• Minister for Employment and Youth Affairs, 1981-82;

In recent years he has also conducted two significant inquiries for the Commonwealth Government. You can read more about Neil’s background here or e-mail Neil here.