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Archive | March, 2010

Continuing Legitimate Interest in Domain Name After Termination of Business Relationship

A respondent’s right to continue using a trademark in its domain name after termination of its business relationship with the trademark holder is a contract issue, but under the right factual circumstances refusing to relinquish the domain name is actionable under UDRP. Ordinarily, permissive registration is conclusive against the complainant in a UDRP dispute because […]

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Calibrating Trademark Holder’s Reputation Outside its Jurisdiction

That any aggrieved trademark holder can institute a claim against any respondent however distant their countries of residence means only that the former has jurisdiction to maintain the proceeding. To advance its cause the complainant has to demonstrate that at the time the domain name was registered its reputation extended to the respondent’s country of […]

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Exercising Self Help to Effect Settlement of a Claim

Nothing could be easier for a registrar owed money (or, in the case herein discussed, the reseller of a registrar) to simply change the registration of the domain name into its own name and hold it for ransom. Grace From Fire, LLC v. ConnectDomain.com Worldwidedomains, Inc, D2010-0143 (WIPO March 9, 2010) (<jackjackass.com>). But, is it […]

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Taking Unfair Advantage of the Complainant’s Trademark

Ordinarily, a trademark must have been in existence before the registration of the domain name for a finding of bad faith registration, but this is not invariable and depends on factors other than timing. The issue is addressed in paragraph 3.1 of the WIPO Overview, which states: Consensus view: Normally speaking, when a domain name […]

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Uncovering and Confirming Knowledge

The basic ingredients for bad faith are knowledge and intention.  Denying is more common than admitting them, and although having knowledge of a complainant and its trademark is not necessarily prejudicial to a respondent’s right or legitimate interest in the disputed domain name, proof of intention must be met by counter proof.  While the foundation […]

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Domain Names Composed of Geographic Indicators

Regions, Cities, Municipalities and Towns may wish to control the use of their names on the Internet but there is an insuperable barrier, namely that naked geographical indicators are not covered under the UDRP and protection under trademark law for geographic terms is uncertain. Nevertheless, there have been a number of recent challenges by public […]

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Extent of Panel’s Independent Investigation

Rules 12 and 10(a) of the Rules of the Policy are closely connected. Rule 12 grants panelists authority to request information from parties, while Rule 10(a) of the Rules of the Policy has been construed to authorize panelists to undertake some minimal research – “The Panel shall conduct the administrative proceeding in such manner as […]

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Legitimate Interest Despite Interim Parking

Parking is not prima facie illegitimate, but it may require plausible explanation where the respondent has knowledge of the complainant’s trademark and has incorporated it into the domain name. Authorized dealers, resellers, distributors, consultants and, in Alstom v. Industrial Tests, Inc., D2009-1702 (WIPO February 6, 2010), companies in the business of testing equipment manufactured by […]

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Not Appropriate for UDRP Determination

UDRP’s remedial niche is limited to disputes of abusive registration of domain names rather than trademark infringement. The WIPO Final Report states that the “scope of the procedure is available only in respect of deliberate, bad faith, abusive, domain name registrations or ‘cybersquatting’and is not applicable to disputes between parties with competing rights acting in […]

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Researching the Past; Blocking Access and Bad Faith

The Panel in Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc., D2009-1580 (WIPO March 2, 2010) (discussed a few days ago on another subject) reminded us that “the ‘robots.txt doctrine’ that bad faith may be found if access to the archive of the historical contents of a website is blocked by a respondent after […]

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Secondary Meaning Cannot Be Assumed

Whether geographically near, as in San Diego Hydroponics & Organics v. Innovative Growing Solutions, Inc., D2009-1545 (March 3, 2010) (registered trademark), or far, as in Digital Alchemy, LLC. V. Digital Alchemy c/o Ramon Felciano, FA0911001295928 (Nat. Arb. Forum January 12, 2010)(unregistered trademark), the complainant cannot assume that the consuming public recognizes its descriptive trademark as […]

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Complainant Cannot Rest its Case on Opprobrium

As for trademarks based on generic terms, however powerful they may be in market A they are unrecognized in market B. If market A and B are widely separated, as are Spain and the United States, and the dispute centers on a two syllable term that is attractive to many merchants peddling goods and services […]

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One Letter Difference But Not Typosquatting

In general, a respondent’s registration of a domain name that misspells a trademark, or is composed of added, substituted or transposed letters that vary the prototype, is not merely confusingly similar but implies knowledge and suggests targeting the trademark. For these minor orthographic variations of trademarks panelists invented the term “typosquatting,” De minimis changes “immediately […]

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Opportunistic Bad Faith

The phrase “opportunistic bad faith” is not found in the WIPO Final Report, but was coined by early Panels initially to refer to disputed domain names that are so obviously connected with famous and well-known trademarks that their use by someone with no connection with them or the complainant’s products suggests respondents taking advantage of […]

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Complainant Does Not Have to Prove It Owns Domain Names

Mattel, Inc. owns trademarks for BARBIE, FASHIONISTAS and SO IN STYLE. The Respondent in Mattel, Inc. v. jaomadesigns, FA1001001303036 (Nat. Arb. Forum March 3, 2010) admitted that the Complainant owned the trademarks but argued that it “has failed to demonstrate ownership pertaining to the following disputed domain names: <barbiefashionista.com>, <brbielovesstila.com>fashionistabarbie.com>.” In so doing the Respondent […]

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Domain Names as Intangible Property Subject to Lien and Attachment

Zuccarini is one of those mythic respondents whose registrations of domain names provided the grist for articulating standards of conduct under the UDRP.  He has also featured as a defendant in disputes arising under the Anticybersquatting Consumer Protection Act.  Most recently, the 9th Circuit affirmed the judgment against him by decision dated February 26, 2010 […]

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Holding Renewal Equivalent to New Registration

The consensus is that renewal of registration does not affect a registrant’s right to a domain name registered in good faith, while a transferee’s rights are determined from the date of its registration.  The Panel in Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010) describes this as the “traditional” approach.  […]

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Construing “Primarily for the Purpose” in Paragraph 4(b)(i) of the Policy

Yesterday’ Note on precedent in deciding UDRP cases touched on dictionary words and descriptive terms. Theories of bad faith under subdivisions of paragraph 4(b) of the Policy have similarly been construed. Thus, the respondent violates paragraph 4(b)(i) if it is found to have registered or acquired the domain name “primarily for the purpose” of holding […]

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The Role of Precedent in UDRP Cases

For consistency in the application of domain name law panelists try to anchor their decisions with citations to earlier cases. It is standard practice by both bench and bar in common law jurisdictions; a practice that is emphasized in the daily Notes. The wealth of domain name law is easily accessible online for prosecuting and […]

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Reverse Domain Name Hijacking Warranted When Allegations of Bad Faith are Without Substance and Should Never Have Been Made

Rule 15(e) of the Rules of the Policy which authorizes a finding of reverse domain name hijacking is symmetrical with paragraph 4(a)(iii) of the Policy.  Either party can be found in bad faith.  The difference of course is in the consequences.  The respondent forfeits the disputed domain name while the complainant is merely chided.  There […]

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