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Archive | September, 2010

Predictability and Consistency in Application of UDRP Jurisprudence

“A proceeding under the Policy is not an assessment of civil trademark infringement,” Ni Insan Kaynaklari Personel ve Danismanlik Limited Sti v. Timothy Michael Bright, D2009-0315 (WIPO May 7, 2009). Rather, the UDRP is jurisdictionally limited to determining whether a respondent’s registration of a domain name incorporating (in whole or in part) a complainant’s trademark […]

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What It Means to Violate Paragraph 4(b)(iv) of the Policy

Economic benefit or commercial gain is fundamental to all the examples of bad faith but paragraph 4(b)(iv) of the Policy is different from the other three in that it focusses more generally on the use to which the domain name is put. The other three include the phrase “you have registered” whereas 4(b)(iv) begins with […]

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To be Commonly Known Means Having a History of Being Known

To state a defense under paragraph 4(c)(ii) of the Policy the respondent has to be “commonly known” by the domain name. The Panel in Bernard Janes v. L.J. Bubenicek & A. J. Main, A&L Technologies, DAU2010-0014 (WIPO September 6, 2010) “does not consider that a respondent could succeed under paragraph 4(a)(ii) of the Policy regardless […]

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Pattern of Conduct as Defining Proof of Bad Faith Registration and Use

Of the four examples of bad faith paragraph 4(b)(ii) of the Policy has reference to multiple instances in the present and the past. The Policy is violated if the respondent “registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, […]

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Jurisdictional Threshold

Ordinarily, “the content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity,” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.2; A&F Trademark, Inc. and Abercrombie & Fitch Stores, Inc v. Justin Jorgenson, D2001-0900 (WIPO September 19, […]

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UDRP’s Flexibility of Scope

Further on the subject of scope discussed in Yesterday’s Note. The UDRP appears clear in its scope, that it is intended “only for the relatively narrow class of cases of ‘abusive registrations’,” ICANN Second Staff Report, Paragraph 4.1(c), dated October 24, 1999, but in practice its boundary is less than sharp in delineating the included […]

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Policy’s Scope Extends Beyond Strangers to Former Business Associates

UDRP complaints are mostly against strangers accused of appropriating for commercial gain disputed domain names which they registered after the complainant’s accrued rights in the trademark. However, complaints have also been filed against former business Associates in which are raised legal issues on the cusp of the Policy’s scope. The easy decision is to dismiss […]

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Inactivity of a Domain Name Registered Many Years Prior to Accrual of Trademark Is Not Grounds for Finding Registration in Bad Faith

It is undoubtedly true that a respondent who holds inactive for many years a domain name identical to a trademark and is unresponsive to a Rule 12 Procedural Order to dislcose its use will fall short of rebutting a complainant’s allegation that it lacks rights or legitimate interests in the disputed domain name. However, a […]

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Rare Though a Word May Be If It Is Recorded in a Dictionary It Is Available For Non Trademark Use

Hershey manufactures a “candy twist” under the trademark TWIZZLERS. The word “twizzler” does not appear in standard desk dictionaries; it is not to be found in Merriam Webster’s Third International Dictionary. It is found in the Oxford English Dictionary where its first use is recorded as 1825. It appears to have entered the vocabulary as […]

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Words and Expressions that Describe Respondent’s Business

The Note for September 13 [Attempting to Extend Monopoly to More than Granted by Statute or Acquired by Common Law] discussed dictionary words, “rapid,” “national” (misspelled “natonal”) and “noble.” Generally, a single word identical or similar to one of two or more terms in a trademark does not support confusingly similarity. It is different against […]

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Heavy Burden of Proving Bad Faith for Surname Trademarks

Complainants whose trademarks are composed of surnames relatively rare in their marketplace but held by a respondent bearing that name do not have a superior right to the disputed domain name whatever their pedigree may be. The well established rule is that “[t]rademark owners shall not be allowed to use the Policy to dispossess summarily […]

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Forfeiting Domain Name for Subsequent Bad Faith Use

A finding of bad faith use is only one half of abusive registration, regardless of its egregiousness. While renewal of a metamorphosed domain is not a new act of registration (the date from which bad faith is measured) a transferee inherits its transferor’s bad faith use and (with some exceptions) will be deprived of the […]

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Attempting to Extend Monopoly to More than Granted by Statute or Acquired by Common Law

RapidShare AG is busy policing its trademark, RAPID SHARE; thirty five proceedings in the past four months. In its most recent filing it argues that it is entitled to <rapid.org> because the domain name “incorporate[s] the Complainants’ marks with the ‘share’ element removed and leaving the ‘dominant element’ ‘Rapid’,” RapidShare AG and Christian Schmid v. […]

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Strong Inference of Actual Knowledge with Misspelled Variations of Trademark

When dictionary words are misspelled in a domain name the inference is persuasive that the respondent had actual knowledge of the trademark targeted. “Naughty” is in the lexicon but “natchty”, “nauhhty” and “nnaughty” are not. The trademark is NAUGHTY AMERICA. The other misspellings are “ameriaca”, “amerixa”, and “ameroca.”  All of these variations in spelling clearly […]

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Trademarks Unknown Out of their Niche and Fair Use of Descriptive Terms

Unless there is “intent to capitalize on the Complainant’s trademark interest, the Complainant cannot assert an exclusive right over a domain name that is a common generic term,” Ultrafem Inc. v. Royal, FA 97682 (Nat. Arb. Forum Aug. 2, 2001) (<instead.com>). There have been a number of recent examples, “streetwise”, “pantaloons”, “fender” and “crediteurope” to […]

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Laches Not a Defense Except When It May Be

Application of laches for sleeping on one’s rights would bar the complainant’s claim even though the respondent’s registration was and its use is in bad faith. But, this is too draconian. If the defense is warranted at all it must be limited to the right circumstances. In an essay published in July 2010 in the […]

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Offering Bona Fide Goods or Services Versus Trading on Trademark’s Goodwill

Win one, lose one. Different Panels; same Complainant, the trademark holder of MOSHI MONSTERS; different Respondents; The word “cheats” is added in both domain names. However, <moshi-cheats.com> used descriptively is ruled legal [Mind Candy Ltd v. Gamers Guides L.L.C, D2010-0995 (WIPO August 12, 2010)]; and, moshimonstercheats.com> used misleadingly infringing [Mind Candy Ltd v. Above.com Domain […]

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Incorporating a Trademark Well Known in the United States and Abroad

Inferences are variously drawn when it comes to passively held domain names. Dictionary words and colloquial combinations are harder to prosecute and easier to defend. The reverse is true with well known trademarks. The onus shifts to the respondent to prove a defense. Failing on the rights or legitimate interests factor is then grist in […]

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Accrual of Trademark Rights: Principal and Supplemental Registers

UDRP is not centric to any particular national law, but where the parties are “domiciled in the United States and United States courts have recent experience with similar disputes … the Sole Panelist shall look to rules and principles of law set out in decisions of the courts of the United States,” EAuto, L.L.C. v. […]

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Consequences of Failing to Police One’s Trademark

Ordinarily, a transferee inherits the bad faith of its transferor and can be dispossessed of the disputed domain name if the use continues unabated. Unopposed, the inference is that the transferee has purchased the domain name for its monetized value. But, the result will be different if the transferee proves its intent to use of […]

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