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Archive | October, 2009

The Incredible Shrinking Inventory of Word Combinations

Is it possible that the inexhaustible wealth of the English language has limitations when it comes to selecting suitable trademarks that have not already been taken by domain name registrants? Or, is it a failure of imagination? To hear it from complainants with later accruing rights there is something unfair in respondents owning (or having […]

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Selling Domain Name For More Than Out-of-Pocket Costs

A respondent violates the Policy when “circumstances indicat[e] that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable […]

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Recovering a Domain Name After Losing It

Domain names are not literally owned, but possessed for a length of time, not unlike a valuable leasehold with option for which continuance of possession requires timely renewal. They can be irrecoverably lost if allowed to lapse for nonpayment of the annual or multi-year fee. This is particularly true for domain names that track trademarks […]

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When the Paper Trail Turns Cold

The USPTO database reports over 20 records containing the phrase “market watch” some of which are presently owned by Dow Jones. Dow Jones is the registered owner of a stylized form of the phrase which it acquired by assignment. It also has a trademark for <marketwatch.com> similarly acquired by assignment. The disputed domain name is […]

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Disclaiming Common Words in Design Trademark

It is not surprising that two companies in different though contiguous States think they can make a living selling coffee at a discount and not surprising either that they select similar names, as trademarks and domains. Inevitably, the trademark holder sees the domain name registrant as trespassing on its rights however generic or descriptive the […]

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Holders of Later Acquired Trademarks Overreaching Their Rights

There is a tendency among holders of later acquired trademarks to overreach their rights and demand forfeiture of earlier registered domain names. There may be circumstances under which a claim can be made but not against the original registrant. The issue has received attention in a number of earlier Notes, October 7, 2008, July 2 […]

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Trademarks Live On in Estates and Beneficiaries

There has been a marked increase in the number of live celebrities with unregistered trademarks demanding return of their names. It catches on that the UDRP is not an unfriendly forum, although panelists in some early cases were not sure. A three member Panel in Bruce Springsteen v. Jeff Burgar and Bruce Springsteen Club, D2000-1532 […]

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Letting the Sunrise Window Close Without the Trademark Holder Availing Itself of the Procedure

Sunrise rights refer to a stipulated period during which an owner of a registered trademark may register a domain name prior to the Registrar accepting registrations from the general public. The model has been employed for a number of gTLDs – <.info>, <.biz>, <.mobi> and <.tel> – as well as regional TLDs – <.eu> and […]

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Trademarks and Personal Names

When Mattel challenges a Mattel [Mattel, Inc. v. Gopi Mattel, FA0411000372847 (Nat. Arb. Forum February 15, 2005) (<mattel.org>)] or Mathiesen a Mathiesen [Mathiesen S.A.C. v. Allan Mathiesen, D2009-0087 (WIPO March 23, 2009) (<mathiesen.com>)] the Respondents answer to the name. But it is an easy ploy for a respondent to assume a name and not be […]

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Limited Jurisdiction of the UDRP

The WIPO Final Report in anticipation and ICANN Second Staff Report, Paragraph 4(c), dated October 24, 1999 glossing the newly implemented UDRP make it clear that the jurisdiction of the arbitral regime was limited to a “special class of disputes” namely claims of abusive registration of domain names. The “notion of an abusive domain name […]

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