Top Menu

Archive | Abusive registration

No Consensus for Reverse Domain Name Hijacking

There is no consensus for reverse domain name hijacking; rather, there is a diversity of views about the conduct that would support it. Rule 15(e) authorizes the Panel “to declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding … [i]f after considering the submissions […]

Continue Reading 0

Evidentiary Demands in a UDRP Proceeding

To succeed in a UDRP case parties must pay attentiion to the evidentiary demands of the process. Complaints are dismissed or denied for three reasons, either complainant 1) lacks priority for its trademark over the domain name; 2) failed to marshal evidence sufficient to prove abusive registration, or 3) respondent has rebutted complainant’s allegations that […]

Continue Reading 0

Opportunistic Registrations of Domain Names

This article, “Opportunist Registrations of Domain Names: What Is Going On, and What Tools Are Available for Trademark Owners,” appears in Bright Ideas, a publication of the Intellectual Property Law Section of the New York State Bar Association, Fall 2014, Vol. 23, No. 2. Bright Ideas Gml Article I. Introduction In June, 2011, the Board […]

Continue Reading 0

Abuse of Process in a UDRP Proceeding

Abuse of process in a UDRP proceeding carries risk for reverse domain name hijacking if respondent appears and proves complainant has falsified the facts. There have undoubtedly been cases in which complainant prevails solely because respondent has defaulted — let us call it the “no show” strategum — where a defense may have changed the […]

Continue Reading 1

Non-Authorized Use of Trademark

Non-authorized use of trademark is not prohibited as long as the use is fair, but “fair” is narrowly defined under UDRP/URS jurisprudence although it could be for a commercial purpose. So, for example, it is not improper to incorporate a trademark where the domain name “seek[s] to communicate the nature of the service or product […]

Continue Reading 0

Laches Defense to Cybersquatting Claim

Lapse of time versus a laches defense to cybersquatting claim in a udrp case is likely to benefit domain name holder unless the trademark is well-known or famous. While Panels are in accord that waiting too long to initiate a complaint makes it difficult to prove bad faith registration they are split on whether laches […]

Continue Reading 0

Dismissal of UDRP Complaint

Ordinarily, complaints are dismissed for two reasons (or the same reason but expressed in two different ways): either the complainant fails to prove respondent registered the domain name in bad faith (although respondent has no right or legitimate interest in it); or respondent rebuts bad faith registration even though it may be using the domain […]

Continue Reading 0

“Genuine” Criticism as Defense to Abusive Registration

Paragraph 4(c)(iii) of the Policy recognizes the free speech defense but this is one of the blurry areas of domain name jurisprudence. The WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition describes two views on criticism. View 1 states that “The right to criticize does not necessarily extend to registering and […]

Continue Reading 0

Standards of Proof, URS and UDRP

In the hierarchy of standards “beyond a reasonable doubt” (criminal intent) is higher than “clear and convincing” (URS) which is higher than “preponderance of the evidence” (UDRP). The UDRP sets forth in general terms conduct that violates a trademark owner’s rights and respondent’s defenses of fair use and registration but to understand the fine points […]

Continue Reading 0

Giving Complainant the Benefit of the Doubt; Why?

The standard of proof for abusive registration is preponderance of the evidence. In lay terms the evidence must be sufficient to answer the question, Is it more likely than not respondent registered the domain name with knowledge of the complainant’s trademark; that respondent had the complainant’s trademark “in mind”? If the trademark did not exist […]

Continue Reading 0

Follow

Get every new post delivered to your Inbox

Join other followers:

4/xVVyQrMpFFp6VcOTT2qD9g.0oyCn-dWDJ0cJvIeHux6iLYvgUztkQI