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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 For example, Arma Partners LLP v. Me, Victor Basta, D2009-0894 (WIPO August 26, 2009) involved the rights of a withdrawn partner […]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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Registrant’s Assent to Maintain Accurate Information in the WHOIS Database

When challenged for abusive registration respondents’ privacy veils are lifted for the duration of the UDRP proceedings and the WHOIS database will so reflect. Proxies if they are truly the registered owners of record and not another name for a privacy service are a different matter. Beneficial owners can remain anonymous, in which event the […]

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The “Primary Purpose” Rule in Construing Offer to Sell Domain Name

Bad faith under paragraph 4(b)(i) of the Policy requires proof that the respondent’s registration of the disputed domain name was for the “primary purpose” of selling it to the complainant. By definition a trademark not in existence at the time of the registration or a trademark in existence but unknown to the respondent could not […]

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What Does It Take to Get a Reverse Domain Name Hijacking Ruling?

There is no consensus on the standards of proof to be applied in reaching a finding of reverse domain name hijacking. It is defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” Rule 15(e) authorizes the Panel to make a finding […]

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Referent for Identical or Confusingly Similar to Trademark is Domain Name Not Any Post-Domain Path

UDRP is not an all-purpose forum for resolving infringement claims. The Policy is limited to abusive registration of domain names. What happens if the infringement occurs in a post-domain path (that takes the Internet user to an interior page of the website)? The Complainant in Romantic Tours, Inc. v. Whois Privacy Protection Service, Inc., FA1003001316557 […]

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Competing with the Same Trademark and Defaulting on Evidence of Priority

Paragraph 4(b)(iii) of the Policy has specific reference to the acts of a competitor. If for its “primary purpose” a respondent registered the disputed domain name to disrupt the other’s business it is evidence of bad faith. The Respondent’s narrative in SunSpots Productions Inc. v. John Laprad, D2010-0184 (WIPO April 26, 2010) claims bona fides […]

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Narrow Trademark Rights Confined to Geographic Area in Which Holder Does Business

Complainants whose unregistered trademarks consist of generic words or descriptive expressions may have standing to maintain the UDRP proceeding, but they have narrow rights confined to the geographic area in which they do business. CNRV, Inc. v. Vertical Axis Inc., FA0912001300901 (Nat. Arb. Forum May 3, 2010) disputing over <adventurerv.com>. The Complainant’s business in located […]

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Name By Which Respondent is Commonly Known

One of the three specified defenses to a claim of abusive registration is proof that “you (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights” (Paragraph 4(c)(ii) of the Policy). In Sandra Andy v. Alessandro Balzarin, D2010-0348 (WIPO […]

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Applying Doctrine of Res Judicata to Dismiss Subsequent Proceeding

Refiling a complaint against the same respondent is not permitted as “of right.” I pointed out in the Note for April 28 that some panelists openly invite complainants to refile a complaint when the factual circumstances change and the new record supports a claim for abusive registration. When the factual circumstances remain the same the […]

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Mandatory Proceeding to Resolve a Claim of Abusive Registration

It is useful to pause in dissecting cases and addressing evidentiary issues to outline for those unfamiliar with the UDRP the mechanism that compels a respondent to answer for its choice of domain name. The authority for hauling a domain name registrant into a UDRP proceeding in response to a trademark holder’s complaint that the […]

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Simultaneous Legitimacy and the First to Register Principle

Where there is a parity of right, the first to register a domain name comprised of a string of syllables, two or three letter acronyms, single words or combination of letters or words is entitled to it. In these circumstances, the “first to register a domain name containing a generic or descriptive mark should prevail […]

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