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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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Falling Short of Confusing Similarity

Similarity in some respects, either of one of two common words or some identical syllables within a word, does not add up to confusing. The threshold test is simply “comparing the disputed domain name with the mark relied upon, both visually and phonetically, and by comparing the respective meanings which each conveys,” RapidShare AG, Christian […]

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Fraudulent Transfer (Hijacking) of Domain Name

The Panel in Lawrence Gurreri v. To Thai Ninh, FA1006001328554 (Nat. Arb. Forum July 12, 2010) states that “the alleged theft of a domain name falls outside the narrow scope of the UDRP policy” and cites two cases that address scope but not theft. While the conclusion is inconsistent with a number of other decisions […]

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Pretending Association with Trademark Holder to Draw Traffic

ICANN’s decision to approve the .xxx suffix for websites with pornographic content is essentially a zoning resolution. It has the same intention, namely to confine adult content to its own district to prevent its contaminating better neighborhoods. Offering pornography is not condemned under the Policy. “The mere fact that a domain name resolves to a […]

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Challenging a UDRP Order Denying Complaint or Granting Cancellation or Transfer

There is no provision under the UDRP for an administrative appeal from an adverse order granting or denying the complaint. Rather, the loser’s recourse is to commence a de novo law suit under the national law of its jurisdiction, which in the case of the United States would be a claim under the Anticybersquatting Consumer […]

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Respondent’s Exposure to Future Claim Following Exoneration of Abusive Registration

There is a notion that a respondent adjudicated as having a legitimate interest in a disputed domain name can be exposed in the future if it changes its content to take advantage of the complainant’s trademark. There is disagreement on the issue (the Octogen line of cases and variants of that thinking), but the consensus […]

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Suspending or Terminating a UDRP Proceeding

Paragraph 18(a) of the Rules of the Policy authorizes the Panel in its discretion to suspend or terminate a UDRP proceeding “[i]n the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute . . . or to proceed to a decision” (emphasis added). The […]

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Adjudicating Disputes with Business and Contract Components

Claims that raise business or contract issues have a mixed history of adjudication under the UDRP. They are sometimes found to be within and other times outside the scope of the Policy. The decision can go either way. Sometimes the decision to dismiss a complaint for lack of jurisdiction rather than grant or deny it […]

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Admissions Against Interest: Documentary Evidence Drawn from Complainant’s Website

In the electronic age as compared to the paper it is harder to scrub or obfuscate the past because the past is continually present in some accessible form, whereas papers may be lost or lie undiscovered. Parties may deny facts, but be unexpectedly confronted by electronically preserved proof contradicting their present contentions. The point is […]

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Patterns of Registering Domain Names Legitimate Practice

Acquiring domain names as assets – for selling, financing, monetizing, trading and warehousing – has been part of the culture of the Internet from the beginning. Merchants in the domain business simply pitched their stalls alongside the more traditional sellers of goods and services in the new souk, sometimes creating such friction with their neighbors […]

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Dialogue and Debate in the Development of UDRP Jurisprudence

UDRP jurisprudence did not come ready made. Panelists assembled it from readily available legal and cultural artifacts, and it grew (among other ways) through the friction of dialogue and debate. An example of this has been observed in earlier Notes discussing the Octogen line of cases advocating “retrospective bad faith.”  The dialogue or debate has […]

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