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Archive | April, 2010

Evidentiary Burden for Proving Trademark of Personal Name

The Panel in Fox News Network, L.L.C. v. C&D International Ltd. and Whois Privacy Protection Service, D2004-0108 (WIPO July 22, 2004) (<tonysnow.com>) stated the proposition in the following way: As the degree of fame decreases from clearly identifiable celebrities with worldwide renown, to nationwide renown or to less well known authors, actors or businessmen with […]

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Invitation to Refile a Complaint Where License Wrongfully Terminated

This Note reviews an issue not frequently before a Panel, namely complainant’s right to maintain a subsequent proceeding where the current status indicates that its license to use a trademark has, rightly or wrongly, been terminated in favor of the respondent. Licensees are among those included as allowable complainants under paragraph 3(a) of the Rules […]

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Bad Faith Must be Directed at Complainant or its Trademark

Domains that are identical or confusingly similar to a well known trademark of which the respondent cannot plausibly deny knowledge are on one end of the spectrum. In a great majority of these cases respondents do not bother to answer the complaint unless they can offer or the record contains sufficient evidence that supports a […]

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Proving Reputation to Counter Denial of Knowledge

Companies come and go and reputations grow or wither, but at the start new businesses are one among many offering similar goods or services. When parties acquire their respective interests close in time and are geographically distant from each other the question of the respondent’s knowledge of the trademark holder is a significant factor in […]

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Credibility as a Factor in Determining Parties’ Rights to a Disputed Domain Name

Although UDRP complaints are resolved solely on papers without benefit of discovery and with no right of confrontation it would be a mistake to discount credibility as a factor in determining parties’ rights to a disputed domain name. Parties make their appearances in submissions and can be judged for their candor or lack of it, […]

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Not Granting a License is Not Dispositive of a Respondent’s Legitimate Interest

Holding a trademark does not guarantee a right to a corresponding domain name even where the trademark antedates the registration of the domain name. The paragraph 4(c) defenses, in fact, expressly recognize differences of timing. Paragraph 4(c)(i) of the Policy opens with the phrase “[b]efore notice of the dispute” expressing thereby that a respondent’s right […]

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Similarity of Domain Name and Trademark Unsurprising Where Parties Service Same Market

Although in Around The Rings Inc. and World Football Insider Inc. v. Dunsar Media Company Limited, Duncan Mackay, Sarah Bowron / Contactprivacy.com, D2010-0153 (WIPO April 7, 2010) the Panel found the similarity between domain name and trademark confusing on a side by side examination – “on this element [the parties’ cases] are finely balanced” – […]

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Right to Regain Domain Name Earlier Registered than Trademark Not Dependent on Respondent’s Use, Non-Use or Underutilization Of It

Unless a complainant has a trademark right with priority over the respondent’s choice there is no principle of law that allows it to acquire a domain name by forfeiture. This does not mean that a respondent’s earlier registration necessarily defeats a prima facie case, but a complainant’s argument that it has a superior right because […]

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The Policy Offers Relief for Abusive Registration of a Domain Name Not Infringement of Trademark

We have to remember that the UDRP is a proceeding of limited scope. The respondent has agreed to submit to arbitration only the issue of abusive registration. The Panel is not empowered to rule on trademark infringement, although infringement of the right secured by trademark is certainly the basis for a ruling in favor of […]

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Recapturing a Lapsed Domain Name

Domain names are not literally owned. Rather, they are held for a length of time pursuant to a registration agreement that must periodically be renewed. The better analogy is to a valuable leasehold interest with an option to renew that can be lost if the registration is allowed to lapse. Trademark holders incorporating their trademarks […]

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Demonstrating that Term Bracketed in Domain Name is Complainant’s Trademark

Domain names composed of a number of words that may include one identical to a trademark is not ipso facto confusingly similar to it. Low though the bar is, the complainant has still to prove confusing similarity where the domain name builds on a term and the composite plausibly attracts Internet users looking for a […]

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Enforcing Trademark Rights of Word Alleged to be Generic

In the 1950s Dr. Alfred Tomatis, a French ear, nose and throat specialist developed a psycho-therapeutic method that is known as the “Tomatis Method”. In 1979 he obtained a trademark on the name TOMATIS which he assigned to Tomatis International SA (TISA). After his death in 2001 TISA encountered financial difficulties and the trademark was […]

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Addition of a Dictionary Word to a Dictionary Word Trademark

It is not surprising that holders of trademarks on the lower end of the classification scale insist that their compositions are suggestive; something more than merely generic or descriptive which may be denied registration. They want to push their symbols up the scale; to claim for them more than their worth; to give them added […]

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Declaring Complaint Filed in Bad Faith

Panelists hold divergent views on several legal principles as they apply to domain names and for this reason to whom the Provider assigns the matter can be determinative to the outcome of the proceedings. This is abundantly clear in the line of cases discussed in recent Notes that support the view that bad faith registration […]

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Domain Names Visually and Phonetically Similar to Trademarks

Orthographic variations such as adding, omitting and transposing letters suggest that the respondent’s motivation for registering a disputed domain name was to capitalize on the pre-existing goodwill associated with the complainant’s trademark. This was implicitly admitted by the Respondent in two early cases, Dow Jones & Company, Inc. and Dow Jones LP v. John Zuccarini, […]

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Conducting a Business in the Same Industry Sector

Passage of time can support a respondent’s defense of legitimate interest if “before any notice” it used “the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services,” paragraph 4(c)(i) of the Policy. In the case of DirecTV, Inc. v. Pimenov Pavel, FA0911001296479 (Nat. […]

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Use of Terms by a Multitude of Third Parties

For trademarks on the weaker end of the spectrum the complainant cannot simply rely on the respondent’s mode of business. Competitors are not deprived of their choices unless the evidence demonstrates adoption for a proscribed purpose. Although professional domainers may be held to a higher standard of investigation their choices do not “not automatically lead […]

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Use of Terms by a Multitude of Third Parties

For trademarks on the weaker end of the spectrum the complainant cannot simply rely on the respondent’s mode of business. Competitors are not deprived of their choices unless the evidence demonstrates adoption for a proscribed purpose. Although professional domainers may be held to a higher standard of investigation their choices do not “not automatically lead […]

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The Conjunctive Requirement of Bad Faith Enforced Regardless of Respondent’s Subsequent Bad Faith Use, However Egregious

In at least one respect the UDRP is a friendlier forum for respondents than the Anticybersquatting Consumer Protection Act (ACPA). This comes about because the conjunctive requirement under UDRP requires the complainant to demonstrate that the respondent’s act of registering the disputed domain name was in bad faith regardless of its subsequent use. The ACPA […]

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Direct Competitors, Geographic Terms and the Issue of Bad Faith

Adding a geographic term to a famous trademark is not less infringing because the trademark also happens to be a dictionary word. The addition neither avoids confusing similarity nor in the case of famous trademarks a finding of abusive registration. The question is whether the domain name – confusingly similar though it may be to […]

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