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Financial Consequences of Cybersquatting: A Cautionary Tale

Except for the time and expense of having to defend claims of infringement there are no severe financial consequences of cybersquatting under the Uniform Domain Name Dispute Resolution. The UDRP is essentially a summary proceeding for evicting domain names from their cyber spaces, either cancelling registrations of infringing domain names or transferring the registrations to […]

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Registering Trademark Without First Obtaining Corresponding Domain Name

Complainant who registers a  trademarks without first obtaining corresponding domain name has no actionable claim against respondent already holding that domain name, at least under the UDRP as traditionally applied. What is meant by “traditional” is that complainant has to prove bad faith in the conjunctive. Yet, despite this obvious truth that trademark rights have […]

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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 […]

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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 […]

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Dictionary Words, Compounds, Phrases and Acronyms

Trademark dictionary words, compounds, phrases and acronyms (or strings of arbitrary letters complainants claim as trademarks) are regularly contested in UDRP proceedings. The registry of trademarks includes numerous dictionary words used fancifully or arbitrarily –– “apple”, “blackberry,” and “orange” (just to name some in the fruit category) –– whose marketplace associations for particular sources of […]

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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 […]

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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 […]

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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 […]

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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 […]

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“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 […]

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