10 January 2014

The firm’s head of Intellectual Property, Jeremy Dickerson, along with senior associate Emily Roberts and associate Georgina Shaw, have co-authored a chapter in the inaugural edition of Online Brand Enforcement: Protecting Your Trademarks in the Electronic Environment, a supplement of World Trademark Review.

The chapter, entitled ‘Lessons from historical UDRP decisions’, focuses on the adoption in 1999 by the World Intellectual Property Organisation of the Uniform Domain Name Dispute Resolution Policy (UDRP) as a means of resolving domain name disputes in an efficient and cost-effective way. The chapter discusses some key points such as whether the UDRP is always the correct procedure to use, are previous UDRP decisions binding, how the process differs from conventional litigation, whether the complainant has rights and if the domain is identical or confusingly similar. The piece goes on to look at legitimate interests in dictionary words, and resellers and distributors of legitimate goods, before providing a concluding summary.

Online Brand Enforcement: Protecting Your Trademarks in the Electronic Environment has been designed as a reference guide for senior brand executives, trademark counsel and anti-counterfeiting practitioners across the world. The publication explores the vital issues concerning online brand protection and the legal frameworks governing the global digital marketplace, providing guidance on domain name management strategies, the nature of online liability and available remedies, the available takedown mechanisms and how best to navigate the generic top-level domain expansion. Although the chapters in this book do not seek to provide specific legal advice (and should not be read as such), only those firms and organisations with specialist expertise in the field were invited to contribute, and the authors raise a number of critical points that brand owners and their advisers should take into consideration when constructing a resilient online brand protection strategy.

This article first appeared in Online Brand Enforcement 2014, a supplement to World Trademark Review, published by The IP Media Group. To view the issue in full, please visit the World Trademark Review website.

Key contact

Jeremy Dickerson

Jeremy Dickerson Partner

  • Head of International 
  • Head of Intellectual Property, Media and Sport
  • Defamation and Reputation Management

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