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Archive | June, 2010

Transferring a Domain Name to another Holder or another Registrar to Evade the Consequences of a UDRP Proceeding

Domain names registered in good faith are freely marketable, but the Policy contains injunctive commands prohibiting transfer to “another holder (i) during a pending administrative proceeding brought pursuant to Paragraph 4 or for a period of fifteen (15) business days … after such proceeding is concluded” [Paragraph 8(a) of the Policy.] Paragraph 8(b) prohibits “transfer[ring] […]

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Actionable Opportunism Does Not Include Registering a Domain Name Before Complainant’s Acquisition of Trademark and Offering to Sell it for its Commercial Value

UDRP jurisprudence requires the complainant to plead and prove that the respondent registered and is using the domain name in bad faith. It implies opportunism in the first instance projected into future use. The two “bad faiths” must exist jointly. Country code policies are constructed on a different theory; a disjunctive rather than conjunctive requirement. […]

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Registering a Domain Name as a Dot “US” TLD

Holders of trademarks composed of given or surnames compete for space and attention with persons who are known by those names. On the silly side of the ledger are respondents who successfully claim to be known by their nicknames, such as “Penguin” and “Jollibee” who are found to have legitimate interests (if not rights) superior […]

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Authority for Mandatory Arbitration of Domain Name Disputes

The domain community is well aware of the UDRP, but other registrants are less familiar with the contractual matrix that binds them to a mandatory arbitration. At the request of the Provider upon receiving a complaint the Registrar is required to confirm the following basic information: “the domain name is registered with it; the Respondent […]

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Broad Interpretation of the UDRP For Standing and What Constitutes Valuable Consideration

Standing to maintain a UDRP proceeding is not limited to persons actually having a trademark. It is “well-established” notes the Panel in The Old Course Limited v. Patrick Woods, D2010-0682 (WIPO June 6, 2010) that “a high profile announcement of a new corporate name can generate goodwill in that name … and [is] recognised as […]

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Status of Respondent’s Right or Legitimate Interest When Trademark (Of Which it is the Assignee) is Cancelled Under Section 8 of the Trademark Law

Domain names identical or confusingly similar to trademarks are not for that reason infringing another’s right. It is basic UDRP law that preexisting or concurrent rights (there being no evidence of opportunism) are sufficient to defeat a claim of abusive registration. This is not undermined by a respondent failing to comply with its statutory deadline. […]

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Domain Names Composed of Foreign Words Directed to English Language Consumers

Domain names composed of common foreign words (allegedly without knowledge that they are identical or confusingly similar to complainant’s trademark) are generally treated as generic terms. Dictionary words like “mariposa”, “mirabella” and “clara” have been unsuccessfully challenged by domestic and foreign trademark holders. Rba Edipresse, S.L. v. Brendhan Hight / MDNH Inc., D2009-1580 (WIPO March […]

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Denying Renewal and Reopening of a Closed Case

A number of panelists have expressly granted permission to complainants or paved their way to refiling complaints on grounds that would not ordinarily be permitted under the test announced in Grove Broadcasting Co. Ltd. v. Telesystems Commc’ns Ltd. D2000-0703 (WIPO November 10, 2000). The Panel in Umpqua Investments, Inc. v. Private Registrations Aktien Gesellschaft, FA1005001324718 […]

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Recovering Domain Name After Failing to Renew Registration

Domain names and trademarks alike can be lost by termination or cancellation if registrations are not renewed (UDRP) or affirmed (Trademark Act) and once lost are retrievable, if at all, with effort. Under U.S. law, a trademark “shall be canceled” (15 U.S.C. 1058(a)) unless the registrant takes affirmative steps between the 5th and 6th years […]

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Likelihood of Confusion Not Relevant Unless Trade Name Qualifies as a Trademark

Although “trade names perform the same ‘origin function’ as trademarks, indicating the source or nature of the business entity they represent, and perform the same investment or advertising function” they are not (or not formally) accorded protection under the UDRP (Second WIPO Report, para. 311). Interjecting “not formally” is meant to emphasize that Panels have […]

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