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Archive | August, 2010

Concurrent Right to a Lexical String Registered by One Party as a Trademark and the Other as a Domain Name

Trademark law recognizes, with qualification that two parties can be entitled to the use of similar, even identical lexical strings where the concurrent user offers unrelated goods or services. The qualification is that “the Lanham Act’s tolerance for similarity between competing marks varies inversely with the fame of the prior mark,” Kenneth Parker Toys Inc. […]

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Not All Similarity is Confusing

Judged objectively not all similarity is confusing with domain names and trademarks. Paragraph 4(a)(i) of the Policy is not satisfied by simply showing that the trademark and the domain name bear a similarity of parts, unless it suggests the whole. The similarity must be confusing to an “objective bystander,” so stated by the minority Panel […]

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Making Changes to the Website After Notice and Filing of Complaint

Despite misgivings expressed by some panelists over the past year (the Octogen line of cases), where there is no evidence of bad faith registration the Policy does not penalize a respondent for changing use before notice and filing of complaint. After notice and filing of complaint there are different rules. Inadvertent transgressors typically involving domain […]

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Prosecuting a Claim Against a Previously Successful Respondent on a Different TLD

Complainants from time to time refile complaints on change of circumstances. Refiling is not barred but complainant must satisfy strict rules generally applied on applications to reargue or renew motions. Entered judgments do not bar commencing an entirely new case. In an early ACPA case, Cello Holdings, L.L.C. v. Lawrence-Dahl Companies, 347 F.3d 370 (2nd […]

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Targeting, A Key Element in Determining Bad Faith Registration and Use

It is fundamental that a respondent’s intent at the time it registers a disputed domain name to take advantage of the complainant’s reputation in the marketplace is an essential element of bad faith. Intent is linked to knowledge of the complainant or its trademark, but proving intent through knowledge in the face of a respondent’s […]

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Small Differences Can Have a Major Effect on the Way Domain Names Are Read

The threshold requirement sets a low bar but small differences “can have a major effect on the way domain names are read,” Travellers Exchange Corporation Limited v. FairFX Plc. D2010-1056 (WIPO July 29, 2010). The Complainant holds the trademark TRAVELEX; it complained that the Respondent’s registrations of <> and <> were abusive. The first of […]

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The Role of Precedent and Authority in UDRP Cases

The UDRP mandates that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case,” Paragraph 10(b) of the Rules of the Policy. And, because a dispute resolution should not be a roulette wheel, the ICANN panelists aim for […]

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Application for Trademark Registration By Itself Does Not Qualify as a Right

A certificate of registration satisfies the threshold requirement for maintaining a UDRP proceeding while a mere “intent to use” application to register a trademark or registration on the Supplemental Register does not. The consensus is that no “presumption [of validity] arises from a pending application to register a mark,” Aspen Grove, Inc. v. Aspen Grove, […]

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The Work of Early Panels in Establishing the UDRP Jurisprudence

The first five UDRP decisions (1 commenced in1999 and the first four of 2000) were decided in Complainants’ favor without Respondents’ participation. Default gives the complainant an advantage, but only to the extent that the Panel is working with a one-sided record. Otherwise, the burden of proof remains with the complainant on all elements of […]

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Complainant Must Hold a Trademark in His/Her Personal Name to Succeed in a UDRP Proceeding

Celebrities whose names are source indicators have common law trademark rights, thus standing under the Policy to capture corresponding domain names, while those who are simply rich and famous do not. Do not, that is, unless the given name is the functional equivalent of a generic affix to a trademarked family name. This dichotomy is […]

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