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Archive | Domain name law

Fair Use Registration of Domain Names for Artists and Hobbyists

There is in the Anticybersquatting Consumer Protection Act a provision not expressly found in the UDRP (at least, not in so many words) but the concept is nevertheless present in the Policy by construction. I’ll return to the UDRP in a moment. The relevant provision in the ACPA (15 U.S.C. §1125(d)(1)(B)(ii)) reads: Bad faith intent […]

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Losing and Reclaiming Domain Names

For registrants who are not trademark owners losing their domain names can be an irretrievable loss; and for trademark owners, perhaps not irretrievable but fraught with uncertainties of recovery. ICANN attempted to solve the problem of inadvertent lapses of registration in the Expired Registration Recovery Policy (ERRP) and its companion the Expired Domain Name Deletion […]

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Astronomical Increases in Domain Names: Low Constancy of Abusive Registrations

When ICANN implemented the Uniform Domain Name Dispute Resolution Policy (UDRP) in 1999 the number of registered domain names were in the low eight digits. Registered domain names passed the first million in 1997. Today, they are in the first third of nine digits, and continuing to grow. In its newly released publication gTLD Marketplace Health […]

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Fair Use Incorporating Trademarks in Domain Names

The paragraph 4(c)(iii) safe harbors of the Uniform Domain Name Dispute Resolution Policy are construed from a five word phrase, “legitimate noncommercial or fair use.” “Noncommercial” like “identical” in paragraph 4(a)(i) has a defined meaning; it does not include domain names inactively held (for any alleged purpose), although non-use is not necessarily fatal to rights […]

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Domain Names Identical to Trademarks But No Likelihood of Confusion

Confusion is a basic element in both cybersquatting and trademark infringement. It appears twice in the UDRP; once in paragraph 4(a)(i) in the adjectival phrase “confusing similarity”, and once in paragraph 4(b)(iv) in the phrase “likelihood of confusion.” Each use of the distinctive phrases is directed to a different observer. More of this in a […]

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No Time Bar for Cybersquatting Claims Under UDRP

Headline in TheDomains.com, June 18, 2016: “Wow: 20 Year Old Domain Name WorldTrade Center.com Lost in UDRP.”  For those who don’t follow UDRP decisions carefully this may elicit, how can this be? Well, surprised or not, and assuming complainant has priority in the string of characters that is both a domain name and a trademark […]

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Disputes Falling Outside the Scope of the UDRP

The UDRP is a forum of limited jurisdiction designed for trademark owners to combat a certain kind of tortious (sometimes tipping to criminal) conduct by which registrants register domain names with the bad faith intent of taking economic advantage of owner’s marks and injuring consumers by beguiling them to disclose personal information. The forum is […]

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Strategic Use of Screenshots from the Wayback Machine

Internet Archive contains a vast library of screenshots of websites that its Wayback Machine captures sporadically over the course of domain names’ histories. While it doesn’t compile daily images it opens a sufficient window to past use which is unique, invaluable, and free. (There are also subscription services, but they come at a hefty cost!). […]

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Trademark Owners’ Rights to Corresponding Earlier Registered Domain Names

As I pointed out in last week’s essay, having trademark rights that come into existence later than registrations of corresponding domain names only gets complainants to first base; they have standing but no actionable claim. I also noted a nuance (not a difference in substance) in standing requirements between the UDRP and the ACPA. However, […]

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Registering and Monetizing Personal Names

At the top of WIPO’s list of the most cybersquatted trademarks for 2015 (issued on March 18, 2016) is “Hugo Boss” with 62 complaints. The report also reveals that the fashion industry led other commercial sectors with 10% of complainant activity. Not surprisingly, in this sector companies (couturiers extending their services to the general public) […]

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Respondents Lose for Lack of Any Defensible Proof

Respondents prevail in approximately 12% to 15% of cybersquatting disputes overall, but a higher percentage prevail if they appear and offer persuasive evidence either establishing rights or legitimate interests or rebutting bad faith. When they fail (whether for not appearing or answering the complaint) it is for lack of any defensible proof. Asserting good and […]

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The Respondent Who Specializes in Misspellings

As trademarks composed of dictionary words or descriptive phrases descend the classification scale there is an increasing likelihood of registrants registering and using domain names corresponding to trademarks plausibly lacking knowledge of trademark owners. In the past several months the lower end includes <summertechcamp.com>, <asclepius.com> (God of Medicine), <hopscotch.com>, <topcare.com>, <bankwell.com>, and <unblock.com>. Earlier there […]

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Lapsed and Abandoned Domain Names Returned to General Pool

Unlike trademarks that are owned (even if not registered) domain names are leased for renewable periods without end, but can be lost by unintentionally failing to renew registrations or intentionally abandoning them. The stronger the mark the greater the likelihood the domain name can be recovered. Culture and Sport Glasgow t/a Glasgow Life v. Yemliha […]

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Taking a Second Bite: Rehearing a Decided Case

The UDRP has no specific rules for rehearing or reconsidering a complaint. It is one of those legal issues left to the ingenuity of panelists and authorized by Rule 15(a): “A Panel shall decide a complaint on the basis of “any rules and principles of law that it deems applicable.” This is precisely what the […]

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What Inferences Can Be Drawn from a Whois Record Update?

Although complainants of trademarks postdating the registration of domain names have standing to maintain a UDRP proceeding they have no actionable claim. (This is also true under the ACPA although it does not preclude claims for trademark infringement). Nevertheless, there continue to be claims testing the theories of “retroactive bad faith” and renewal that implicate […]

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Consents to Transfer: Foregoing Traditional UDRP Analysis

There has been a noticeably larger number of cases over the past several months of respondents consenting to cancellation or transfer of accused domain names, the last one published on December 31, Converse Inc. and All Star C.V. v. Parisa Mazari, FA1512001650796 (Forum December 31, 2015). In this particular, and other cases, accepted consents shortcut […]

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Entitlement to Short Letter Domain Names

Claims of cybersquatting for registering and holding two and three letter domain names have a history dating back to the first year of the operation of the UDRP. The earliest examples are <daf.com>, Tenenhaus Philippe v. Telepathy, Inc, 94355 (Nat. Arb. Forum May 17, 2000), and <kis.com> Kis v. Anything.com Ltd, D2000-0770 (WIPO November 20, […]

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Passive Holding of Domain Name Not Grounds for Forfeiture

It is an interesting phenomenon that complainants and their counsel continue to believe that trademark owners have greater rights to corresponding domain names than domain name holders who have priority of registration. Their arguments unfold in a familiar line of false reasoning that inactivity of use and renewal of registration (to take just two contentions) […]

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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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Noteworthy Domain Name Decisions 2015

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble.  Update […]

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