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Archive | May, 2010

Parties’ Disputes Outside Scope of the Policy

The line separating issues within from those outside the scope of the Policy is not always clear. Contract disputes relating to parties’ relationships are generally outside the scope, but facts can bring them within. For example, Arma Partners LLP v. Me, Victor Basta, D2009-0894 (WIPO August 26, 2009) involved the rights of a withdrawn partner […]

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Legitimacy of Fan Sites

Fan clubs generally come into existence without express permission and sometimes over the (frequently delayed) objection of the honoree to celebrate his or her life work and achievements. The WIPO Overview poses the following question: “Can a fan site constitute a right or legitimate interest in the disputed domain name?” (paragraph 2.5). There are two […]

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The Confusion of Attracting Internet Traffic Through Deception

The twin bete noires of the market are confusion and deception, which (as one legal mechanism) the UDRP is designed to combat. Domain names are invitations; they either identify the person behind the door or announce the subject or business therein promoted. In the case of trademarks, their reputations precede them. Business thrives on volume. […]

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Silences in Determining Legitimacy In Registering and Using Domain Names

Silence with knowledge that a respondent has incorporated a trademark in its domain name can support legitimacy if the respondent has brought itself within the safe harbor of paragraph 4(c)(i) of the Policy. However, mere delay in prosecuting a claim for infringement – silence without intention to give approval – is not a defense. Equity […]

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Trademark Validity Not an Issue in UDRP Proceeding

Parties should be reminded that the UDRP is not a trademark court even though it adjudicates rights to trademark infringing domain names. The limited jurisdiction of the UDRP does not authorize the Panel to determine the issue of a trademark’s validity, so that when an allegation of invalidity is presented as a defense (as it […]

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Disclaiming Association with the Trademark Holder

As a general rule placing a disclaimer on the website is not effective to legitimize a disputed domain name, although a legitimate reason for one cannot be ruled out. Disclaimers have been found appropriate in two circumstances, legitimate use of trademark for a bona fide offering of goods or services, car parts for example, DaimlerChrysler […]

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Concurrent Use of Lexical Elements for Domain Name and Trademark

Concurrent uses of lexical elements that also happen to be trademarks are not necessarily the result of abusive registration and are not improbable where the parties 1) operate in different markets and offer goods or services in different classes, 2) there is no evidence that the respondent had prior knowledge of the complainant or its […]

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Knowledge of Complainant and its Trademark Not a Prerequisite to Forfeiture of Domain Name

Ordinarily, bad faith rests on a finding that the respondent is targeting the complainant, which implies (or at least an inference can be drawn) that it is aware of the complainant and its trademark. However, there are circumstances under which the respondent may genuinely have no knowledge of the complainant or its trademark and nevertheless […]

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Pattern of Present and Past Acts in Assessing Bad Faith

To violate paragraph 4(b)(ii) of the Policy the complainant has to prove that the respondent engaged in a “pattern of conduct.” Pattern suggests a customary practice rather than an isolated act. It can involve frequent single or multiple registrations spread out over a lengthy period or multiple registrations of domain names over a short period. […]

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The Four Non-Exclusive Examples of Bad Faith Determined by Past and Present Acts

Abusive registration of a disputed domain name presupposes past and present acts by the respondent inimical to the complainant’s trademark rights. Obvious examples are appropriations of well known or famous trademarks to capture Internet traffic for commercial gain. President and Fellows of Harvard College v. Domains By Proxy, Inc., Online Property LLC., D2010-0263 (WIPO May […]

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