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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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Prevailing Against One Respondent Does Not Guarantee Proving Bad Faith Against Another

There are many repeat complainants policing their trademarks in UDRP proceedings. Those of well known brands invariably prevail against defaulting, but not always against appearing respondents. Pharmaceuticals (Sanofi-Aventis), banks and finance (Citigroup, Inc., MasterCard International Incorporated) , fashion (Christian Dior Couture), retail (Harrods Limited, Burberry Limited), hotels and travel (Sheraton International Inc.), automobiles (Bayerische Motoren […]

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Application of the Willful Blindness Standard to Registration and Use of an Expired Domain Name

Ordinarily, registration and use of dictionary words singly or combined to form a descriptive phrase are available to the first to register on the principle that common words cannot be monopolized. This principle, however, is not without qualification. It does not mean in every instance that a respondent is entitled to register common words that […]

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Implausibility of Defensive Proof to Complainant’s Demand for Transfer of Domain Name

It is incongruous to combine words drawn from different languages to create a domain name in which the dominant word is identical to a complainant’s trademark. In Teva Pharmaceutical Industries Ltd. v. Protected Domain Services / Dworld c/o Basil Administrator, D2010-0532 (WIPO May 28, 2010) the Respondent combined the English word, “my”, with a transliteration […]

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Favoring Complainant in Pornosquatting Case Where Respondent Lacks Rights or Legitimate Interests in the Domain Name

Respondents have a heavy burden in proving rights or legitimate interests in domain names for purveying pornographic content identical or confusingly similar to a trademark. Correspondingly, the complainant’s burden is lightened in proving bad faith. The question in these cases is whether the respondent had the complainant or its trademark in mind when it registered […]

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Unawareness of Complainant or Its Trademark Supports Good Faith Registration

There can be two independent reasons for unawareness of a complainant or its trademark. One is the trademark’s lexical composition – generic through fanciful; the other is geographic distance. A lexically unrecognized trademark outside its territorial market is less likely to be known to a domain name registrant. Both these reasons are present in GoFit […]

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Expanding the Circumference of Bad Faith Registration

There is a struggle going on in the community of UDRP panelists. One group of panelists would expand the circumstances for bad faith registration; they argue for a unified construction that eliminates the conjunctive requirement in those egregious circumstances in which respondents having speculated on dictionary words, common combinations or descriptive phrases which target later […]

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Commercial Use of Domain Name Incorporating Trademark

Nominative fair use and initial interest confusion are opposite propositions, but they have in common unauthorized use of a complainant’s trademark. In both, the Internet user may initially believe that the domain name will take him to a website sponsored by the trademark holder. Yet, the first qualifies as a defense and the second signifies […]

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Importance of Serving Early Cease and Desist Letter

The timing of notice can be a critical factor in determining parties’ respective rights to a disputed domain name. A cease and desist letter is important for establishing an outside date. It stops the clock on the paragraph 4(c)(i) defense. MBO Partners, Inc. v. MyBizHomepage, Inc., FA1004001319466 (WIPO June 1, 2010). While a complainant’s delay […]

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Asserting a Right or Legitimate Interest Requires Respondent to Offer Verifiable Proof

Parties controlling evidence must produce it to establish their contentions. Non production leads to the conclusion that the asserted proof does not exist. Just as it is expected that a complainant prove it has a trademark right to maintain a UDRP proceeding, the respondent must demonstrate it has a right or legitimate interest in the […]

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Use of Disputed Domain Name Consistent With the Sense of the Words

No person is entitled to a monopoly over words that are common to all. Trademarks composed of generic terms or descriptive phrases lack the strength of those composed of suggestive or arbitrary signifiers. If words and phrases in everyday use that have been granted trademark status are to be forbidden – taken out of the […]

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