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Archive | Abusive registration

Do Changes in the Whois Registry Amount to New Registration?

Some trademark owners see changes in the Whois Registry as an opportunity to seize control of domain names corresponding to their trademarks. The issue boils down to the identity of the domain name holder; whether it is the same or different person than the original registrant. This is important because intentions of successors who have […]

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Dictionary Words Generic; In Compound Distinctive

Dictionary words are generic when employed denotatively for their ascribed meanings, therefore incapable of trademark status, but can nevertheless acquire distinction if used connotatively as arbitrary or suggestive symbols. It follows too that  compounds composed of generic terms are not condemned to being generic simply because of their parts; can in fact be distinctive and […]

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Research of Facts and Law under the UDRP

Ordinarily in commercial alternative dispute resolution processes arbitrators are not authorised to independently do factual research, and there is continuing disagreement about what if any legal research can be done. Best practice is firm about factual research; and less certain about legal research. It is generally understood that a neutral’s role is limited to assessing […]

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Role of Credibility in Assessing Claims and Defenses

In a number of UDRP cases decided this year several turned on the issue of credibility, sometimes involving “advocate’s hyperbole” and at other times outright misdescription of the website’s content. The Chancellor, Masters and Scholars of the University of Cambridge v. Kirkland Holdings LLC., D2015-1278 (WIPO October 5, 2015) (<>). In many of these cases […]

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Noteworthy Domain Name Decisions for October 2015

Noteworthy Domain Name Decisions for April through September 2015 here. Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting (Legal Corner Press, 558 pages) is now available in print and e-book editions and can be purchased from Amazon and Barnes & Noble There is an ongoing supplement to the book at […]

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Concurrent Trademark Rights Not Grounds for Cybersquatting

It is out of the ordinary for respondents in UDRP proceedings to have registered trademarks; it is more so that parties should also be in the same business. It may be suspicious that the later to register was unaware of the earlier but domain name registrants are under no duty to search trademark databases to […]

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Failing to Prove Abusive Registration Through Ineptness

Unlike court actions default in responding to complaints is not deemed an admission of liability. Complainant carries the burden to the end. That’s why it’s particularly interesting to read from time to time of disputes in which complainants are utterly inept on the evidentiary demands for proving their cases. Panels have shown little tolerance for […]

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Good and Bad Faith in Registering and Using Domain Names

Complainant prevails only if it proves conjunctive bad faith. Bad faith use can be inferred if the proof supports bad faith registration but there is no inference of abusive registration the other way around, although as I have pointed out in earlier Blogs there are panelists who go their own way on this issue. There […]

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Overreaching: Priority of Rights to Domain Names

Complainants whose trademarks postdate domain name registrations continue to misunderstand the law as it applies to their rights under both the Uniform Domain Name Dispute Resolution Policy (UDRP) and the Anticybersquatting Consumer Protection Act (ACPA).While cyberspace has unlimited capacity (assuming availability of power) and plenty of room for everyone who wants to be there only […]

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Trademark Owner’s Right to Earlier Registered Domain Name

The Anticybersquatting Consumer Protection Act (ACPA) provides that “[a] person shall be liable in a civil action by an owner of a mark . . . if . . . the mark . . . is distinctive at the time of the registration of the domain name. . . .” This surely means that if […]

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