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Archive | November, 2009

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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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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Limits to Unauthorized Resellers, Distributors and Consultants

Two recent decisions have highlighted Respondents’ legitimate interests in domain names that incorporate a holder’s trademark, by happenstance the same Complainant, SAP AG v. SAP User List, D2009-1285 (WIPO November 8, 2009) (November 17, 2009, LegitimateUse) and SAP AG v. UniSAP, Inc., D2009-0297 (WIPO April 28, 2009) (May 29, 2009, Incorporating). That there are limits […]

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Test of Knowledge; Awareness of Complainant’s Trademark

Paragraph 2 of the UDRP reads that by “applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that … (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of […]

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Can There Be Typo-Piracy Before Issuance of a Trademark?

Registering 1,017 variants of the Complainant’s trademark FREECREDITREPORT.COM is eye-popping and in its way hugely comic. ConsumerInfo.com, Inc. v. Netcorp Netcorp c/o Netcorp, FA0909001283469 (Nat. Arb. Forum November 11, 2009). Here is a dozen sampling from the beginning of the alphabet: <arfreecreditreport.com>, <asfreecreditreport.com>, <bfreecreditreport.com>, <breecreditreport.com>, <cafreecreditreport.com>, <cfreecreditreport.com>, <cofreecreditreport.com>, <connecticutfreecreditreport.com>, <ctfreecreditreport.com>, <dcfreecreditreport.com>, <defreecreditreport.com>, <dfreecreditreport.com>. How does […]

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Complainant, Successor Trademark Holder

Successor trademark holders complaining about domain names registered before they acquired their interests have the added burden of not having all the documentary facts and sometimes no explanation for long delays in taking action against a registrant . This was illustrated recently in Shem, LLC v. Solytix, Inc., D2009-0739 (WIPO July 30, 2009) for <autocar.com> […]

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The Problem of Waiting Too Long

A long line of decisions holds that laches is not applicable to a UDRP proceeding, but waiting too long to assert a claim weakens the complainant’s case. The majority in Board of Trustees of the University of Arkansas v. FanMail.com, LLC., D2009-1139 (WIPO November 2, 2009) noted that “the considerable delay in bringing this case […]

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Confusingly Similar and Similar But Not Confusing

There are domain names though similar are not necessarily confusingly similar. They sit on the borderline, and not surprisingly their status may be viewed differently by different panelists. In the same way that a an original registrant is regarded differently from an assignee (the good faith of one is not heritable by the other for […]

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Legitimate Use of Trademark: Consultants, Distributors and Resellers

First it was authorized resellers whose incorporation of a complainant’s trademark was deemed to be legitimate if they met the 4-part test originally announced in Oki Data Americas, Inc. v. ASD, Inc., D2001-0903 (WIPO November 6, 2001). Subsequently, the legitimacy was extended to unauthorized resellers, distributors and consultants. The 4-part test requires that the respondent […]

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Timely Answer and Supplemental Submissions

The Rules of the Policy limit each party to one pleading (Paragraphs 3 [complaint] and 5 [answer]), which can be supplemented in either of two ways, by the parties submitting supplementary material requested by the Panel under Paragraph 12 of the Rules or with the Panel’s permission upon a party’s request. Paragraph 12 is generally […]

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Insufficiency of Proof

Proving that a domain name is confusingly similar to complainant’s trademark is but one-third of the journey; the easiest part since on that issue the complainant controls the proof. However, if the disputed domain name was registered prior to the complainant acquiring its trademark it can prevail only on proof that a subsequent registrant lacks […]

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Retroactive Bad Faith: Disproving Good Faith

The phrase “retroactive bad faith” comes from two recent cases, same panelist, City Views Limited v. Moniker Privacy Services / Zander, Jeduyu, ALGEBRAL VE, D-2009-0643 (WIPO July 3, 2009) and Octogen Pharmacal Company, Inc. v. Domains By Proxy, Inc. / Rich Sanders and Octogen e-Solutions, D2009-0786 (WIPO August 19, 2009). “Retroactive” refers to bad faith […]

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Assessing Rights and Legitimate Interests For Parody and Satire

Parody targeted against a particular person or organization as a branch of political speech deserves the highest level of legal protection, Hustler Magazine, Inc. v. Falwell, 485 U.S. 46 108 S.Ct. 876 (1988), however offensive the speech may be, which in Hustler found the Reverend in an outhouse accompanied by bitingly satirical words. “[I]n the […]

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Evidence Necessary to Prove Common Law Trademark

While it is true that “Panelists with WIPO and NAF have sometimes approached the issue of proof of trademark ‘rights’ … in a slightly more relaxed manner than does the USPTO when it requires proof of secondary meaning,” NJRentAScooter v. AM Business Solutions LLC, FA0909001284557 (Nat. Arb. Forum November 4, 2009), it is equally true […]

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Mimicking Trademark by Appropriating Its Dominant Syllabic Elements

It is not necessary for a string of syllables to make sense to obtain a trademark registration. Indeed, the least sense syllables make the more obvious its appropriation. In this respect a string of nonsense is no different from any other arbitrary sign, which under trademark law is given the highest protection. Invented nonsense does […]

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Untying Registration and Use in Construing Bad Faith

The two letter combination “hz” is not by itself confusingly similar to “Hertz” (the automobile rental company) despite the aural similarity, but can become so when coupled with “car,” as in <hzcar.com>, Hertz System, Inc. v. Kwan-ming Lee, D2009-1165 (WIPO October 14, 2009). Asserting purity of intention for future use as proof of right or […]

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Timing and Circumstances of Acquisition

Timing and Circumstances of Acquisition Having an incontestable trademark composed of generic or descriptive elements opens the door to a UDRP challenge, but length of use in commerce is no guarantee that the holder is entitled to the corresponding domain name. Weak trademarks lack the strength of those composed of suggestive or arbitrary signifiers. If […]

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What Proof Satisfies for Demonstrable Preparations?

Receiving notice after a website has become operational supports a defense under paragraph 4(c)(i) of the Policy. There is no violation if the respondent is either presently using or making “demonstrable preparations to use” the domain name, as long as it is “in connection with a bona fide offering of goods or services.” The amount […]

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Three Short Takes On Routine Issues

The three issues discussed below have in common factual circumstances that preclude resolution under the Policy. Either the complainant has no registered trademark and cannot prove an unregistered one; or its grievance is complicated by a contract dispute relating to the future ownership of the disputed domain name; or it offers its trade name (composed […]

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Identity Theft Victims: Hijacking and Phishing

Hijackers have something in common with pickpockets Their modus operandi is stealth. Their victims no more realize their pockets have been picked than their domain names transferred to a new Registrar and Registrant. In these cases the surreptitious transfer of a domain name is equivalent to a registration. Cybersquatting by theft. AHI Invest GmbH v. […]

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