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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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