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Archive | February, 2010

Consequences of Disclaiming Exclusive Rights

World Publications, LLC v. GMW Digital, LLC, D2009-1737 (WIPO February 8, 2010) is a brief decision. The complaint was denied on the grounds that the Respondent had registered the disputed domain names – <privatemeetingssummit.com> and <privatemeetingsummit> – prior to (in fact, many years earlier) than the Complainant’s acquisition of a trademark right. I am limiting […]

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Failing to Make a Case for Confusing Similarity

Paragraph 4(a)(i) of the Policy sets forth the elements for jurisdiction. A complainant has standing to maintain a UDRP proceeding only if 1) it has an existing trademark to which 2) the disputed domain name is identical or confusingly similar. If the complainant either has no trademark or if it does but the domain name […]

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Proving Common Law Trademark Rights by Showing Renown in a Particular Marketplace

However identical or confusingly similar a disputed domain name may be to a name used by the complainant if the name is not a trademark the dispute does not belong in a UDRP proceeding. Although it is not necessary for an alleged trademark to be registered, the complainant’s burden of proof rises in proportion to […]

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Targeting as an Essential Element of Proof for Trademarks Composed of Generic and Descriptive Terms

Having a registered trademark buys standing but it is not sufficient to win a domain name if its composition is on the weaker end of the classification scale.  The Panel noted in National Gardening Association, Inc. v. CK Ventures Inc., FA0911001294457 (Nat. Arb. Forum February 16, 2010) that “it seems probable that the USPTO only […]

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Default Not An Admission of Material Facts

Respondents default in appearance in a high percentage of cases and in many of them the complainant prevails. However, a complainant is not entitled to relief simply because it has a trademark and a respondent does not suffer forfeit of the domain name because it defaults. This was illustrated most recently in General Electric Company […]

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Insufficiency of Evidence; Benefit of the Doubt

Tatra, a.s. has national trademark registrations for TATRA in the United States and the European Community and is also the owner of a number of other TATRA and TATRA-family trademark registrations around the word, including the International Trademark Registry. It does not appear to have a trademark in Russia, the Respondents’ home jurisdiction in TATRA, […]

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Crossing Boundary Separating Denotative and Connotative

Yesterday’s Note discussed a dictionary word used misleadingly to confuse Internet users looking for the Complainant, but words can be used denotatively as well as connotatively. In ordinary usage, words often cross the boundary that separate them as a speaker weaves his or her sentences. In the dictionary, definitions are denotative. For example, defining the […]

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Respondent Responsible for the Content of the Website

The general rule is that where a respondent uses a parking service to populate its website with links that redirect Internet users to goods or services competitive with complainant it violates paragraph 4(b)(iv) of the Policy. The underlying principle is that a respondent cannot evade its representation and warranty under paragraph 2 of the Policy […]

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Correcting the Law in a Later Decision Wrongly Stated in an Earlier One

There is no intra-UDRP procedure for correcting a wrong decision. To state the case charitably, there are some decisions that deserved more than a single set of eyes, but the Policy provides no procedure for appeal. Recourse is to a national court, which in the United States would be a claim in district court under […]

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Contract Complaints Outside Scope of UDRP

The UDRP is a niche regime for arbitrating claims of abusive registration of domain names. It is not a stand-in for a court of law. The Complainant’s theory in IM Global LLC v. Intermedia Film Equities, Sterling Davis, D2009-1690 (WIPO January 24, 2010) was that the Panel could order transfer of the disputed domain name, […]

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