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Archive | December, 2010

Proof of Common Law Right

The test for proving a common law right is demanding. It cannot be satisfied by asserting facts unaccompanied by evidence establishing their truth. The Overview of WIPO Panel Views on Selected UDRP questions at paragraph 1.7 states in relevant part The complainant must show that the name has become a distinctive identifier associated with the […]

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Not all Offensive but Transient Linking is Presumptively Bad Faith

There are two classes of respondents whose registrations have been found to be immune from presumptive bad faith use even though the websites to which the domain names resolve at the commencement of the proceedings contain links that would otherwise be considered a violation of the Policy. These are newly acquired domain names populated either […]

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Plain English Words Adopted as Trademarks by Foreign Companies

Domain names that mimic trademarks composed of common words that have achieved extraordinary penetration in the domestic and international marketplaces are more likely to be seen as opportunistic registrations [Honeywell International Inc. v. Celeris Controls, FA1010001351938 (Nat. Arb. Forum November 15, 2010)]; less likely with trademarks confined to niche markets [Webvisions Pte Ltd. v. WebVision, […]

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Omitting, Adding, Transposing and Substituting Letters as Evidence of Typosquatting

The Panel in Apple Inc. v. Andrew Sievright, Domain Source, D2010-1916 (WIPO December 8, 2010) (<appl.com>) notes that “[t]yposquatting is as close as it is possible to come to per se cybersquatting.” The reason for this is the obviousness of respondent’s knowledge of the trademark and its opportunism in making typographical variations of it for […]

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Legitimate Business Model to Use or Sell Domain Names Composed of Generic Terms Without Intention to Profit from Complainant’s Trademark

In prosecuting a claim under the UDRP the complainant cannot prevail unless it demonstrates that the respondent had its trademark in mind when registering the domain name and intended to take advantage of it for commercial gain. There is no per se illegitimacy in registering and using a domain name identical or confusingly similar to […]

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Complainant Geographically Remote from Respondent’s Market

A complainant’s trademark may be well known internationally in its particular market without being known generally or to the respondent. The disputed domain name in Webvisions Pte Ltd. v. WebVision, D2010-1702 (WIPO November 26, 2010), <webvision.com>, is almost identical to WEBVISIONS, differing only in omitting the plural “s”.  Changing the form of a name (which […]

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Insufficiency of Evidence in Asserting Rather Than Proving Facts

In view of the fact that the UDRP is a paper only proceeding the pleadings and evidence must be developed with as much care and the record be as complete as a motion for summary judgment in a civil action. Proof of a fact is not satisfied by assertion or supposition, but requires concrete evidence. […]

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What Standards for Confusing Similarity?

In assessing whether a domain name is confusingly similar to the complainant’s trademark the analytical procedure is to make a side by side comparison of the two. The “www” prefix and the “gTLD” are disregarded as functional elements. The focus is solely on the second level domain (SLD). As a general rule if the SLD […]

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Offering to Sell a Domain Name Not Bad Faith Unless Registered with that Specific Intent

It is not selling domain names that is unlawful under the UDRP but registering them “primarily” with that purpose in mind to the trademark holder or competitor. The Complainant in X6D Limited v. Telepathy, Inc.,D2010-1519 (WIPO November 16, 2010) contends that the disputed domain name, <xpand.com> has been used in bad faith because the Respondent […]

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Domain Names Similar But Not Confusingly Similar to Trademarks in Determining Threshold Issue

That respondents can avoid the ultimate penalty of forfeiture with a trademark plus negative or disputatious terms is well established as a defense under paragraph 4(c)(iii) of the Policy. There is another class of domain names incorporating trademarks or their dominant features that although similar in part are not confusingly similar so as to sustain […]

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Targeting Complainant’s Trademark is an Essential Element for Bad Faith

Where a number of parties share a right to a trademark the complainant has the burden of demonstrating that it was the one targeted by the respondent. In OVB Vermögensberatung AG v. Michele Dinoia and SZK.com, D2009-0307 (WIPO May 6, 2009) for example it was clear from the website content that the Respondent had another […]

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