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Archive | November, 2010

Having Trademark Rights, Not Failing to Assert Them Is the Threshold Issue

The respondent’s sole contribution under paragraph 4(a)(i) of the Policy should be to confute the complainant’s assertion of jurisdiction: that the complainant either has no trademark or if it does the domain name is neither identical or confusingly similar to it. The term “has rights” means that the complainant has them at the time of […]

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Domain Names Composed of Geographic and Public Entity Designations

Seaports, airports, cities and municipalities have not fared well in their claims to take possession of disputed domain names. Geographic designations are either not registrable or when used as a badge for goods or services are considered generic. A list of unsuccessful complainants includes Port of Helsinki vs. Paragon International Projects Ltd., D2001-0002 (WIPO February […]

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Applying the UDRP As It Is, Not As it Could or Should Be

The Uniform Domain Name Resolution Policy does not protect holders, who in granting or acquiescing in the registration of domain names incorporating their trademarks, have failed to protect themselves by written contract. As the Policy is written, mala fide use is not a sufficient basis or removing the domain name from the respondent, although the […]

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How Much Preparation is Enough to be Demonstrable Proof of a Right or Legitimate Interest?

Paragraph 4(c)(i) of the Policy contains three conjunctive elements: “before any notice to you of the dispute”, “[you made] demonstrable preparations to use” and the proposed use of the domain name was “in connection with a bona fide offering of goods or services.” The term “demonstrable preparations” requires proof of measurable preparations. Prior activity that […]

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Incorporating a Well Known Trademark Plus Distinguishing Suffix in Domain Name

The Panel noted about Wal-Mart Stores, Inc. v. Sergio Cabrera, FA1008001344053 (Nat. Arb. Forum November 8, 2010) that is was an “extremely rare case.” The Complainant requested that the Panel issue an order to transfer registration of <walmartvendor.com>. The addition of the generic term “vendor” does not (the Complainant alleges) create a name distinctive from […]

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Complainant’s Duty to Inform Itself as a Defense to Reverse Domain Name Hijacking

The sole remedy for respondents hauled into a UDRP proceeding without cause is a finding of reverse domain name hijacking. The term “reverse domain name hijacking” is defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” The Rule is given substance […]

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First to Register Entitled to Domain Name

The doctrine that the first to register a domain name is entitled to keep it does not secure a right under all circumstances, Educational Tertiary Service v TOEFL, D2000-0044 (WIPO March 16, 2000), although it will if the registration is made in good faith, XIHA Oy v. Qiu Shengjie, Chen Qing Mei, D2010-1204 (WIPO October […]

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Innocent and Good Faith Registration

Registrations of domain names are not abusive merely because they happen to be identical or confusingly similar to a trademark. Something more is required, namely timing and targeting. The WIPO Final Report and UDRP recognize that the “behavior of innocent or good faith domain name registrants is not to be considered abusive.” A familiar complainant […]

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Registering a Domain Name Composed of Common Terms That Have Many Meanings

A person is free to choose any string of phonetic elements or numbers as a domain name as long as the choice does not infringe the legal rights of any third party. In making a choice, the registrant is doubly bound. It represents and warrants in the registration agreement and further assents to a similar […]

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Privileged Speech: Pure and Impure Motives

The Panel in Tradewind Media, LLC d/b/a Intopic Media v. Jayson Hahn, D2010-1413 (WIPO October 27, 2010) notes that “we are dealing with an unusual situation” in this case. Unusual not because the Respondent defaulted in appearance or even that the record is skimpy but that the Panel “consider[ed] itself competent to independently visit the […]

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Abusive Registration Solely by Bad Faith Use

Can there be abusive registration solely by bad faith use? The circumstances  under paragraph 4(b)(iv) are different from those of paragraphs 4(b)(i-iii) in that 4(b)(iv) refers only to “use” while the other three refer only to registration. Paragraphs 4(b)(i) and (ii) expressly condemn registering domain names where the “primary purpose” is to take advantage of […]

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Registered in Good Faith, Using in Bad Faith; Liability Under UDRP and ACPA

The UDRP is more forgiving than the Anticybersquatting Consumer Protection Act (ACPA) in that the complainant must plead and prove both registration and use in bad faith. So that, while (under the UDRP) bad faith registration presupposes bad faith use, bad faith use is not (at least, has not generally been found to be) conclusive […]

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