Top Menu

Archive | January, 2010

Inattention to the Timing of Rights

Default in appearance is not an admission of any material facts under the UDRP, although letting the complainant make the record increases the likelihood that its facts will support its complaint. But even with that advantage there continue to be decisions that illustrate inattention by complainants to the timing of rights. The date of registration […]

Continue Reading 0

Spelling and Misspelling Variances to Trademarks

Varying the trademark in some minor way, or typosquatting as it is called generally involves misplacement or dropping of letters, adding or deleting the plural form, or inserting or removing dashes between words. But not all variances support a finding of bad faith even though the domain name may be confusingly similar to the complainant’s […]

Continue Reading 0

Predicate for Bad Faith, Competing Services Incorporating the Trademark

The Policy has built in protections for competitors whose Internet shingles bear a similarity to descriptive trademarks, but protection does not extend to competitors who incorporate the complainant’s trademark. Many trademarks composed of common words while descriptive can also be distinctive. The Complainant in Fashion Career Center, LLC v. Resume Pro Writers Guild c/o Michael […]

Continue Reading 0

Descriptive Phrase, Confusing Similarity Between Trademark and Domain Name

Confusion appears twice in the Policy: “confusing similarity” in paragraph 4(a)(i) and “likelihood of confusion” in paragraph 4(b)(iv). A domain name may be similar and confusing from the standpoint of an ordinary observer, but that is only relevant for standing. However, the higher probability that there is a likelihood of confusion may never be reached […]

Continue Reading 0

Market Presence of Trademark at the Time of Domain Registration

Companies that are oaks today were acorns yesterday. A complainant’s market presence today can be a determining factor for a favorable finding on its prima facie case that the respondent lacks rights or legitimate interests in the disputed domain name. However, the same evidence is insufficient to prove respondent’s bad faith registration. eDreams, Inc. v. […]

Continue Reading 0

Trademark Infringement Outside Scope of the Policy

Just as with current use of trademarks existing in different classes, a trademark holder and a domain name registrant can co-exist in cyberspace using identical or confusingly similar terms. Whether the respondent in a UDRP proceeding is an infringer in a trademark sense is outside the scope of the Policy. The Panel is limited to […]

Continue Reading 0

Transfer Between Commonly Controlled and Related Persons

A transferee cannot argue that it is untainted by its transferor’s male fide conduct during its ownership and use of a disputed domain name. The rule is that a respondent’s good faith is measured from its own not its predecessor’s acquisition of the domain name. Unless the evidence demonstrates otherwise, a transferee inherits only its […]

Continue Reading 0

Disturbing the Careful Balance Between Trademark Owners and Domain Name Registrants

The Panel in Torus Insurance Holdings Limited v. Torus Computer Resources, D2009-1455 (WIPO January 10, 2010) is the first panelist to offer a detailed critique of the “retrospective bad faith” line of cases first announced in City Views Limited v. Moniker Privacy Services / Zander, Jeduyu, ALGEBRAL VE, D2009-0643 (WIPO July 3, 2009) (complaint denied) […]

Continue Reading 0

Distributor Rights, Registering Variants of Complainant’s Trademarks

A distributor’s right or legitimate interest in a domain name depends upon the circumstances under which it acquired the domain name. In a number of early cases the complainant’s distributor agreement was silent on the issue of domain names. It makes it difficult to find “a violation of the Policy when there is no specific […]

Continue Reading 0

Not All Confusion is Actionable

A trademark holder’s rights are prospective; they may reach back on proof of trademark use in the market place and consumer recognition predating its registration; but otherwise prior use of an identical or confusingly similar term by another as a domain name or identifier of its goods or services belongs to the person who got […]

Continue Reading 0

Inferring from Circumstantial Evidence

Rule 14(b) of the Policy provides that if a party does not answer the complaint or comply with any request from the Panel “the Panel shall draw such inferences … as it considers appropriate.” The Panel’s decision in MBS Consulting SPA v. mbsconsul inc. / web master, D2009-1505 (WIPO December 23, 2009) illustrates what is […]

Continue Reading 0

Respondent’s Burden of Production

Paragraph 4(a)(ii) of the Policy is the fulcrum test for both parties. If the respondent demonstrates that it has a right or legitimate interest in the domain name it concludes the proceedings regardless of the complainant’s trademark rights. But, to demonstrate a right or legitimate interest the respondent must either come forward with concrete evidence […]

Continue Reading 0

Trademark Consisting of or Incorporating a Geographic Indicator

Trademark composed on geographic indicator is on the lower end of protectability where the domain name is used in its semantic sense. The dissent in Loma Linda University Adventist Health Sciences Center, Loma Linda University and Loma Linda University Medical Center v. Development Services, StateVentures, LLC, D2009-1059 (WIPO December 18, 2009) agrees that geographic indicators […]

Continue Reading 0

Non-Conflicting Use of and Equal Rights in Generic Terms

The general rule is that parties who utilize generic terms as trademarks or service marks (dictionary words, common phrases) cannot use the UDRP to bar others from using them absent proof that the respondent has targeted the complainant or its trademark for commercial gain. This extends to exotic and foreign words of uncertain meaning to […]

Continue Reading 0

No Priority Over Respondent’s Legitimate Interests

Registering domain names composed of dictionary words improves the likelihood of good faith even if they conflict with existing trademarks, Kim Laube & Company Inc. v. RareNames, WebReg, FA0910001291282 (Nat. Arb. Forum December 22, 2009) (<natureschoice.com> and <natures-choice.com>). If there are any “buts” they depend on the timing of the registration, the proximity of the […]

Continue Reading 0

Registration in Good Faith; Subsequent Change of Use = “Retroactive Bad Faith”

I am returning to this issue of “retroactive bad faith” because it is beginning to receive attention from a number of panelists. It represents a new construction of the Policy that conflates the “and” and “or” of paragraph 4(a)(iii) so that bad faith registration rests on the respondent’s present use of the domain name where […]

Continue Reading 0

Credibility as a Factor in Inferring Intent

It is perfectly rational to register a domain name for its income potential. Pay-per-click revenue can be respectable, but it shades into illegitimacy when the motive to create revenue is coupled with intent to take advantage of another’s trademark. While “generation of revenue from domain name parking activities is not necessarily activity in bad faith” […]

Continue Reading 0

Reproducing Distinctive Part of the Trademark, Omitting Article: A Form of Typosquatting

SAVE THE CHILDREN and <savechildren>. Omitting an article, in this case the “the” but retaining the verb and subject, Save the Children Federation, Inc. v. Steve Kerry, North West Enterprise,Inc, D2009-1404 (WIPO December 9, 2009) does not create a distinctive new combination and has some of the earmarks of typosquatting; that is, a de minimus […]

Continue Reading 0

Famous, Not Distinctive

Trademark infringement there may be, but that is for another forum. General Electric Company v. Estephens Productions, D2009-1438 (WIPO December 17, 2009): “If the Complainant believes that the Respondent’s company name and logo infringe the GE mark, it may seek a judicial remedy.” However, “[f]or purposes of the UDRP … the reflection of the Respondent’s […]

Continue Reading 0

Follow

Get every new post delivered to your Inbox

Join other followers:

4/xVVyQrMpFFp6VcOTT2qD9g.0oyCn-dWDJ0cJvIeHux6iLYvgUztkQI
%d bloggers like this: