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Archive | December, 2009

Interaction of Timing, Market Penetration and Classification of Trademark

More explanation is required from the respondent when the disputed domain name mimics a well known trademark. The closer the parties are geographically the greater the likelihood and less convincing in denial that the respondent was aware of the trademark when it registered the domain name. Timing comes into the equation when the complainant’s commercial […]

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Distinguishing “Holder” and “Registrant”

A proceeding is properly commenced against the “holder” of the domain name who by definition may or may not be the registrant (proxy for example). Paragraph 2 of the Policy defines “Respondent” as “the holder of a domain-name registration against which a complaint is initiated.” Generally, “holder” and “registrant” are the same person, but not […]

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Trademark on the Supplemental Register (By Itself) Does Not Satisfy Jurisdiction Requirement

A trademark registered on the Supplemental Register is not one in which a complainant has a right. The complainant’s fate is to have its complaint denied. Jahnke & Sons Construction, Inc. v. Trachte Building Systems, Inc., FA0910001292233 (Nat. Arb. Forum December). Its position is no better than having no registration at all. Although there are […]

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Material Change, Basis for Refiling Complaint

Refiling a complaint against the same respondent is not permitted as “of right.” Reconsideration may be granted under certain circumstances where the complainant demonstrates that it comes within the narrow class not barred by res judicata or foreclosed under other principles of quiescence. It would not include denial of the first complaint for insufficiency of […]

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Trafficking Heavily with Appropriated Trademarks

Domainers brought many times to the bar for abusive registrations of domain names are sometimes serendipitous in spite of themselves, FJ Enterprises v. Belize Domain WHOIS Service Lt, FA0910001291660 (Nat. Arb. Forum December 8, 2009) with <huntwise.com> and Kay Hill, Ltd. v. Texas International Property Associates- NA NA, FA0805001190984 (Nat. Arb. Forum July 9, 2008) […]

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Lacks Rights or Legitimate Interests, But No Bad Faith Registration

The Anticybersquatting Consumer Protection Act is more friendly to trademark holders than the UDRP in that proof of bad faith is in the disjunctive and satisfied by proof that the respondent either “registers, traffics in, or uses a domain name,” 15 U.S.C. 1125(d)(1)(A) (ii).” However, the plenary route is considerably more costly and time consuming […]

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2nd Generation Respondent and the Duty to Investigate

Panels have carved out for domainers a duty to investigate that is greater than registrants for one or two domain names. But, tension nevertheless remains among panelists against whom and under what factual circumstances the principle of heightened duty is to be applied. This tension is clearly presented in Vaga-lume Midia Ltda v. Kevo Ouz […]

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Twin Cases: Same Complainant, Different Panels and Results

There is a good amount of chatter on the Internet about the aggressiveness of the City of Paris claiming domain names that include “parvi” and “Paris.” It was successful in Ville de Paris v. Jeff Walter, D2009-1278 (WIPO November 19, 2009) (<parvi.org>) and unsuccessful in Ville de Paris v. Salient Properties LLC, D2009-1279 (WIPO December […]

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Domaining with Descriptive Names

However similar domain names are to trademarks, even confusingly similar does not diminish a respondent’s legitimate interest based on its making a bona fide offering of goods or services before notice of the dispute. Advertising and search portals deriving pay-per-click revenue are not proscribed unless there is evidence that the domain name was intentionally registered […]

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What Constitutes Notice of the Dispute?

The question of what constitutes notice of the dispute arises in connection with paragraph 4(c)(i) of the Policy. The respondent must satisfy each of three elements: 1) before any notice of the dispute, 2) it has used or made demonstrable preparations to use the domain name, 3) in connection with a bona fide offering of […]

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Territorial Limitation of Trademarks

The Panel in BECA Inc. v. CanAm Health Source, Inc., D2004-0298 (WIPO July 23, 2004) points out that “[t]rademark rights are territorial in nature…. National trademark laws often permit a party to obtain registered trademark rights in that jurisdiction even where it is clear that the party has deliberately chosen that trademark having seen the […]

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Passive Holding of a Domain Name Composed of a Dictionary Word; Also a Well Known Brand

The rule of non-use of a domain name incorporating a well known trademark was laid down in Telstra Corporation Limited v. Nuclear Marshmallows, D2000-0003 (WIPO February 18, 2000). The Panel fashioned a five-point test. Point five is that “it is not possible to conceive of any plausible actual or contemplated active use of the Domain […]

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Descriptive Contraction of Unregistered Trade Names

In science there are multiple examples of people in different locations contemporaneously discovering the same laws of nature, inventing the same mechanical devices and formulating the same mathematical equations. And, in these cases there frequently is no definitive conclusion of priority except to put the laurel on both heads. Trademark law is simpler: the same […]

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Asserting Trademark Rights; No Record

Yesterday’s Note discussed a Respondent’s attempt to explain how a string of syllables forming a non-word – for all appearances a typographic error – could have intrinsic meaning to Internet users searching for a website of that name. Although there is a history of invented words as trademarks – Xerox®, Exxon®, Kodak®, Viagra® – “State […]

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Original Registration Date of Transferor Not Probative of Transferee’s Good Faith

However sincerely a respondent may believe that its acquisition of a domain name from a prior registrant is in good faith the proof depends on the timing of registration, the composition of the domain name and the contents of the web site. The Respondent in State Farm Mutual Automobile Insurance Company v. Eli Shoval, FA0910001291281 […]

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Unregistered Trademarks for Personal Names

Unless personal names have trademark status they are not protected under the Policy. Excluded are living persons whose reputations are earned out of the spotlight of commerce even though active in the figurative scrum of their professions. A particularly good example of this is Jonathan Ive v. Harry Jones, D2009-0301 (WIPO May 5, 2009). Mr. […]

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Criticism without Commercial Intent, Normative International Legal Principle

The WIPO Overview of WIPO Panel Views on Selected UDRP Questions records two views on using domain names identical or confusing similar to a complainant’s trademark for criticism. “This is sometimes said to reflect differences in national laws relating to freedom of speech,” WIZZ Air Hungary Airlines Limited Liability Company v. Holden Thomas, D2009-1105 (WIPO […]

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Respondent’s Representation and Warranty in Assessing Bad Faith

To what extent should the representation and warranty provision of the domain name registration agreement be factored into an analysis of the respondent’s good or bad faith? If the answer is, as some panelists believe, that it should be a continuing factor, Is it equally applicable to all registrants or limited to high volume registrants? […]

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Maintaining a UDRP Proceeding Against Multiple Respondents

Paragraph 3(c) of the Rules for UDRP provides that a “complaint may relate to more than one domain name provided that the domain names are registered by the same domain name holder.” Alleging that multiple domain names are jointly controlled is not sufficient to satisfy the rule. Deckers Outdoor Corporation v. Karen McDougall, Frances Kirwan, […]

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Appearance Not Required for a Finding in Respondent’s Favor

Paragraph 4 of the Policy “sets forth the type of disputes for which [the respondent is] required to submit to a mandatory administrative proceeding.” “Mandatory” does not mean that the respondent itself must appear or lose control of the domain name. It is “obliged by virtue of the [registration] agreement to recognize the validity of […]

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