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Archive | 2010

Proof of Common Law Right

The test for proving a common law right is demanding. It cannot be satisfied by asserting facts unaccompanied by evidence establishing their truth. The Overview of WIPO Panel Views on Selected UDRP questions at paragraph 1.7 states in relevant part The complainant must show that the name has become a distinctive identifier associated with the […]

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Not all Offensive but Transient Linking is Presumptively Bad Faith

There are two classes of respondents whose registrations have been found to be immune from presumptive bad faith use even though the websites to which the domain names resolve at the commencement of the proceedings contain links that would otherwise be considered a violation of the Policy. These are newly acquired domain names populated either […]

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Plain English Words Adopted as Trademarks by Foreign Companies

Domain names that mimic trademarks composed of common words that have achieved extraordinary penetration in the domestic and international marketplaces are more likely to be seen as opportunistic registrations [Honeywell International Inc. v. Celeris Controls, FA1010001351938 (Nat. Arb. Forum November 15, 2010)]; less likely with trademarks confined to niche markets [Webvisions Pte Ltd. v. WebVision, […]

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Omitting, Adding, Transposing and Substituting Letters as Evidence of Typosquatting

The Panel in Apple Inc. v. Andrew Sievright, Domain Source, D2010-1916 (WIPO December 8, 2010) (<appl.com>) notes that “[t]yposquatting is as close as it is possible to come to per se cybersquatting.” The reason for this is the obviousness of respondent’s knowledge of the trademark and its opportunism in making typographical variations of it for […]

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Legitimate Business Model to Use or Sell Domain Names Composed of Generic Terms Without Intention to Profit from Complainant’s Trademark

In prosecuting a claim under the UDRP the complainant cannot prevail unless it demonstrates that the respondent had its trademark in mind when registering the domain name and intended to take advantage of it for commercial gain. There is no per se illegitimacy in registering and using a domain name identical or confusingly similar to […]

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Complainant Geographically Remote from Respondent’s Market

A complainant’s trademark may be well known internationally in its particular market without being known generally or to the respondent. The disputed domain name in Webvisions Pte Ltd. v. WebVision, D2010-1702 (WIPO November 26, 2010), <webvision.com>, is almost identical to WEBVISIONS, differing only in omitting the plural “s”.  Changing the form of a name (which […]

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Insufficiency of Evidence in Asserting Rather Than Proving Facts

In view of the fact that the UDRP is a paper only proceeding the pleadings and evidence must be developed with as much care and the record be as complete as a motion for summary judgment in a civil action. Proof of a fact is not satisfied by assertion or supposition, but requires concrete evidence. […]

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What Standards for Confusing Similarity?

In assessing whether a domain name is confusingly similar to the complainant’s trademark the analytical procedure is to make a side by side comparison of the two. The “www” prefix and the “gTLD” are disregarded as functional elements. The focus is solely on the second level domain (SLD). As a general rule if the SLD […]

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Offering to Sell a Domain Name Not Bad Faith Unless Registered with that Specific Intent

It is not selling domain names that is unlawful under the UDRP but registering them “primarily” with that purpose in mind to the trademark holder or competitor. The Complainant in X6D Limited v. Telepathy, Inc.,D2010-1519 (WIPO November 16, 2010) contends that the disputed domain name, <xpand.com> has been used in bad faith because the Respondent […]

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Domain Names Similar But Not Confusingly Similar to Trademarks in Determining Threshold Issue

That respondents can avoid the ultimate penalty of forfeiture with a trademark plus negative or disputatious terms is well established as a defense under paragraph 4(c)(iii) of the Policy. There is another class of domain names incorporating trademarks or their dominant features that although similar in part are not confusingly similar so as to sustain […]

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Targeting Complainant’s Trademark is an Essential Element for Bad Faith

Where a number of parties share a right to a trademark the complainant has the burden of demonstrating that it was the one targeted by the respondent. In OVB Vermögensberatung AG v. Michele Dinoia and SZK.com, D2009-0307 (WIPO May 6, 2009) for example it was clear from the website content that the Respondent had another […]

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Having Trademark Rights, Not Failing to Assert Them Is the Threshold Issue

The respondent’s sole contribution under paragraph 4(a)(i) of the Policy should be to confute the complainant’s assertion of jurisdiction: that the complainant either has no trademark or if it does the domain name is neither identical or confusingly similar to it. The term “has rights” means that the complainant has them at the time of […]

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Domain Names Composed of Geographic and Public Entity Designations

Seaports, airports, cities and municipalities have not fared well in their claims to take possession of disputed domain names. Geographic designations are either not registrable or when used as a badge for goods or services are considered generic. A list of unsuccessful complainants includes Port of Helsinki vs. Paragon International Projects Ltd., D2001-0002 (WIPO February […]

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Applying the UDRP As It Is, Not As it Could or Should Be

The Uniform Domain Name Resolution Policy does not protect holders, who in granting or acquiescing in the registration of domain names incorporating their trademarks, have failed to protect themselves by written contract. As the Policy is written, mala fide use is not a sufficient basis or removing the domain name from the respondent, although the […]

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How Much Preparation is Enough to be Demonstrable Proof of a Right or Legitimate Interest?

Paragraph 4(c)(i) of the Policy contains three conjunctive elements: “before any notice to you of the dispute”, “[you made] demonstrable preparations to use” and the proposed use of the domain name was “in connection with a bona fide offering of goods or services.” The term “demonstrable preparations” requires proof of measurable preparations. Prior activity that […]

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Incorporating a Well Known Trademark Plus Distinguishing Suffix in Domain Name

The Panel noted about Wal-Mart Stores, Inc. v. Sergio Cabrera, FA1008001344053 (Nat. Arb. Forum November 8, 2010) that is was an “extremely rare case.” The Complainant requested that the Panel issue an order to transfer registration of <walmartvendor.com>. The addition of the generic term “vendor” does not (the Complainant alleges) create a name distinctive from […]

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Complainant’s Duty to Inform Itself as a Defense to Reverse Domain Name Hijacking

The sole remedy for respondents hauled into a UDRP proceeding without cause is a finding of reverse domain name hijacking. The term “reverse domain name hijacking” is defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” The Rule is given substance […]

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First to Register Entitled to Domain Name

The doctrine that the first to register a domain name is entitled to keep it does not secure a right under all circumstances, Educational Tertiary Service v TOEFL, D2000-0044 (WIPO March 16, 2000), although it will if the registration is made in good faith, XIHA Oy v. Qiu Shengjie, Chen Qing Mei, D2010-1204 (WIPO October […]

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Innocent and Good Faith Registration

Registrations of domain names are not abusive merely because they happen to be identical or confusingly similar to a trademark. Something more is required, namely timing and targeting. The WIPO Final Report and UDRP recognize that the “behavior of innocent or good faith domain name registrants is not to be considered abusive.” A familiar complainant […]

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Registering a Domain Name Composed of Common Terms That Have Many Meanings

A person is free to choose any string of phonetic elements or numbers as a domain name as long as the choice does not infringe the legal rights of any third party. In making a choice, the registrant is doubly bound. It represents and warrants in the registration agreement and further assents to a similar […]

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