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Archive | July, 2010

Foreign Respondent Targeting Complainant in its Language and Market

Conceivably, a respondent on one continent could register a domain name confusingly similar to a trademark actively used on another and plausibly deny knowledge of the existence of the complainant or its mark. Plausibility dissolves, however, when the domain name resolves to a website populated with advertisements “directed solely to US.-based businesses,” AutoZone Parts, Inc. […]

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Protecting Existing Trademarks from Predators and Parasites

Predators and Parasites come in a variety of shapes and sizes as are abundantly illustrated in these ongoing Notes. Some specialize in omitting or adding letters to a complainant’s trademark; others, adding affixes or suffixes to the second level domain; still others, appropriating the whole trademark and running with the domain name until forfeiture. Some […]

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Exceptional Circumstances in Request to Extend Time to Respond to Complaint

UDRP complaints must be answered within 20 days [Rule (5a)] or by an extended date on proof of exceptional circumstances [Rule 5(d)]. The Rules were amended effective March 1, 2010 to permit service of papers electronically. Prior to the amendment respondents were technically in default if their electronic service was timely but their hard copy […]

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Foregoing Analysis When Respondent Offers to Transfer Domain Name

In Benchmark Brands, Inc. v. Sky Blue Marketing, FA1006001331227 (Nat. Arb. Forum July 23, 2010) the Respondent admitted that there was “no dispute over the domain names complained about and they have already offered to transfer the names.” The Panel concluded that all it needed to do was “state its basic finding on these issues. […]

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Respondent’s Registration of Domain Name Contrary to Complainant’s Instructions

Employees, vendors and agents perform services and act on instructions of employers and principals. That a respondent in one of these classes registers a domain in his own name and refuses to transfer it on his employer’s or principal’s request is in violation of the UDRP. Sommerpine Books LLC v. Henton Enterprises, Hank Roberts, D2010-0805 […]

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Good Faith Registration Overrides Lack of Rights or Legitimate Interests and Bad Faith Use

It is seen as a deficiency by some that a complainant is remediless under the UDRP for blatant bad faith use of a domain name registered in good faith. There have been a number of interpretative suggestions to rationalize a construction of the Policy to circumvent the paragraph 4(a)(ii) requirement for bad faith in the […]

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Establishing Credibility as an Element of Persuasion

A credible witness has a better chance of persuading the Panel than one who fails to present his case properly. “It is possible,” states the Panel in Maurice Sporting Goods, Inc. v. American Sportcase, LLC, D2010-0689 (WIPO June 29, 2010) “to theorize a different story” but the story presented is “supported by some circumstantial evidence […]

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Prior Right to Domain Name Through Purchasing Predecessor’s Assets

A successor in interest related to a predecessor who acquired the disputed domain name in good faith is not a new registrant whose right is vulnerable to forfeiture to a well known trademark holder. It not only succeeds to its predecessor’s good faith registration, it holds the domain name as an asset to use (consistent […]

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Nominative Fair Use of Trademark

There are clearly circumstances under which a trademark can be incorporated into a domain name without permission from the trademark holder. Just as clearly there are domain names alleged to be used with fair intent that exploit the trademark’s value and infringe on the holder’s legal rights. The tension is palpable. A domain name containing […]

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Proving Exception to the General Rule, Timing of Domain Name Registration

Where two parties in the same geographic area offer the same range of goods to the general public it might appear that in registering a domain name identical to the complainant’s trademark the Respondent had an impure motive. What if the domain name was registered before the complainant established its business? Although the respondent had […]

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