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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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Protecting Personal Names from Highjackers

Should there be a special exception for business persons whose personal names are highjacked for Internet commerce? On their face, the WIPO Reports of 1999 (para. 167) and 2001 (para. 181 et. seq.) do not support such a view, but the question is suggested because a number of recent decisions have moved the discourse in […]

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Proof of Demonstrable Preparations; What Standard?

What is sufficient? Sufficient is not merely alleging preparations without demonstration. Intention to activate a website in the future is not proof. DigiPoll Ltd. v. Raj Kumar, D2004-0939 (WIPO February 3, 2005). Between something and a sufficient something is a chasm. Different panelists; different proof. Some want more; some accept less. Since the evidence is […]

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Registering Domain Name with Complainant’s Knowledge and Consent

A respondent’s admission that the complainant is the beneficial owner of domain names is proof that she lacks rights or legitimate interests in them but not that she acquired them in bad faith. Abusive purpose where the parties have or had a business relationship depends on their history. In Club 1948, an Illinois not for […]

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The Role of Local Law in UDRP Jurisprudence

Panelists early concluded that local law had no place in deciding rights to disputed domain names. “Panels should struggle to interpret the Policy in as uniform a manner as possible regardless of the location of the parties,” 1066 Housing Association Ltd. v. Mr. D. Morgan, D2007-1461 (WIPO January 18, 2008) (<1066ha.com>) (Both parties, U.K.; Transferred). […]

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Date of Registration For Determining Bad Faith

In assessing bad faith “the complainant must prove that the respondent has ‘targeted’ the complainant or its mark in some way, or at the very least that the respondent had the complainant or its trademark in mind when it selected the disputed domain name,” Foodcube Technologies Inc. v. Registrant [1349920]: Domain Administrator, Foodcube Takeaways, D2009-0945 […]

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Trademark and Domain Names Created by Combining Ordinary Words

Holders whose trademarks are composed of phrases formed by combining ordinary words cannot monopolize other combinations that are similar in some respects but neither identical nor confusingly similar to their own invention. Respondents who vary the language to create a distinctive phrase similar to the complainant’s trademark may be acting in good faith even as […]

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A “Sucks” Website Must Live Up to Its Billing

Simply adding “sucks” to the second level domain does not preclude confusing similarity with the complainant’s trademark. A pejorative is treated as a non distinguishing descriptive term. The question is whether the website to which the domain name resolves is what it advertises itself to be, a criticism or “gripe” site. For this the Panel […]

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Prior Business Relationships

The UDRP provides a remedy for abusive registrations of domain names, including against parties formerly related, but jurisdiction does not extend to disputes or circumstances concerning past relationships. The Respondent in Feline Instincts, LLC v. Feline Future Cat Food Co., Inc., FA0906001270908 (Nat. Arb. Forum October 2, 2009) claimed that prior to partnering with the […]

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Generic Foreign Words + Famous Mark

Adding a dictionary word or descriptive phrase to a trademark may call for an explanation – Everglades Direct, Inc. v. HR Direct LLC, FA0908001278110 (Nat. Arb. Forum September 23, 2009) [adding “online” HR DIRECT to form <hrdirectonline.com>] discussed September 28-29th – but is not an obvious infringement of another’s rights. That is not the case […]

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Burdens of Proof and Production; Establishing Standards

How does the complainant affirmatively prove that the respondent lacks rights or legitimate interests in the disputed domain name when the proof is within respondent’s control? The answer is now given in every decision that the complainant must present a prima facie case; the burden then shifts to the respondent. Proof of lack of rights […]

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