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Proving Cybersquatting on Weak Trademarks

Proving cybersquatting on weak trademarks rises in difficulty as the marks descend the classification scale. Dictionary words such as “bespoke”, “emoney” and “upbeat”, descriptive phrases such as “historic hotels” and “broadband voice” , combined words such as “md online”, “master page” and “great courses” and compounds such as in “nestegg” may be registrable as trademarks […]

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Standard for Declaring Reverse Domain Name Hijacking

Except where complainant’s claim is truly egregious for which there can be said to be a “settled policy”––Happy as Clams, Inc., a California Corp., DBA Date Like a Grownup v. Heather Dugan, D2014-1655 (WIPO November 1, 2014)––there is no fixed standard for declaring reverse domain name hijacking. This is because in the view of some […]

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Defense of Free Speech Under UDRP Depends On the Panel You Draw

It may be surprising to learn that defense of free speech under UDRP depends on the Panel you draw; but there’s an explanation, which is that not all panelists’ views are harmonized as happens in common law courts that follow a strict precedential regime imposed by appellate authority. “The panel you draw” warning comes from […]

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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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