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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 <> 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) (<>) 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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