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Archive | August, 2010

Concurrent Right to a Lexical String Registered by One Party as a Trademark and the Other as a Domain Name

Trademark law recognizes, with qualification that two parties can be entitled to the use of similar, even identical lexical strings where the concurrent user offers unrelated goods or services. The qualification is that “the Lanham Act’s tolerance for similarity between competing marks varies inversely with the fame of the prior mark,” Kenneth Parker Toys Inc. […]

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Not All Similarity is Confusing

Judged objectively not all similarity is confusing with domain names and trademarks. Paragraph 4(a)(i) of the Policy is not satisfied by simply showing that the trademark and the domain name bear a similarity of parts, unless it suggests the whole. The similarity must be confusing to an “objective bystander,” so stated by the minority Panel […]

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Making Changes to the Website After Notice and Filing of Complaint

Despite misgivings expressed by some panelists over the past year (the Octogen line of cases), where there is no evidence of bad faith registration the Policy does not penalize a respondent for changing use before notice and filing of complaint. After notice and filing of complaint there are different rules. Inadvertent transgressors typically involving domain […]

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Prosecuting a Claim Against a Previously Successful Respondent on a Different TLD

Complainants from time to time refile complaints on change of circumstances. Refiling is not barred but complainant must satisfy strict rules generally applied on applications to reargue or renew motions. Entered judgments do not bar commencing an entirely new case. In an early ACPA case, Cello Holdings, L.L.C. v. Lawrence-Dahl Companies, 347 F.3d 370 (2nd […]

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Targeting, A Key Element in Determining Bad Faith Registration and Use

It is fundamental that a respondent’s intent at the time it registers a disputed domain name to take advantage of the complainant’s reputation in the marketplace is an essential element of bad faith. Intent is linked to knowledge of the complainant or its trademark, but proving intent through knowledge in the face of a respondent’s […]

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Small Differences Can Have a Major Effect on the Way Domain Names Are Read

The threshold requirement sets a low bar but small differences “can have a major effect on the way domain names are read,” Travellers Exchange Corporation Limited v. FairFX Plc. D2010-1056 (WIPO July 29, 2010). The Complainant holds the trademark TRAVELEX; it complained that the Respondent’s registrations of <> and <> were abusive. The first of […]

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The Role of Precedent and Authority in UDRP Cases

The UDRP mandates that “[i]n all cases, the Panel shall ensure that the Parties are treated with equality and that each Party is given a fair opportunity to present its case,” Paragraph 10(b) of the Rules of the Policy. And, because a dispute resolution should not be a roulette wheel, the ICANN panelists aim for […]

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Application for Trademark Registration By Itself Does Not Qualify as a Right

A certificate of registration satisfies the threshold requirement for maintaining a UDRP proceeding while a mere “intent to use” application to register a trademark or registration on the Supplemental Register does not. The consensus is that no “presumption [of validity] arises from a pending application to register a mark,” Aspen Grove, Inc. v. Aspen Grove, […]

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The Work of Early Panels in Establishing the UDRP Jurisprudence

The first five UDRP decisions (1 commenced in1999 and the first four of 2000) were decided in Complainants’ favor without Respondents’ participation. Default gives the complainant an advantage, but only to the extent that the Panel is working with a one-sided record. Otherwise, the burden of proof remains with the complainant on all elements of […]

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Complainant Must Hold a Trademark in His/Her Personal Name to Succeed in a UDRP Proceeding

Celebrities whose names are source indicators have common law trademark rights, thus standing under the Policy to capture corresponding domain names, while those who are simply rich and famous do not. Do not, that is, unless the given name is the functional equivalent of a generic affix to a trademarked family name. This dichotomy is […]

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Historical Snapshots from the Wayback Machine

In the curious case of Eneco BV v. Eneco, D2010-0548 (WIPO July 7, 2010) – curious because the Panel made the Respondent’s case despite its default – a search of <> on the Internet Archive’s Wayback Machine at “” provided evidence of good faith registration and use years prior to the Complainant’s trademark. Moreover, “[s]ome […]

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Speculation and Unsupported Assertion is not Proof

The complainant has the burden of proof on all elements of the Policy. It is lighter where the complainant has control of the evidence. For example, for proving that a respondent lacks rights or legitimate interests under paragraph 4(a)(ii) of the Policy there is not usually any conclusive evidence since the evidence is controlled by […]

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Asserting (Insisting on) Good Faith Even As the Factual Record Contradicts It

A respondent violates paragraph 4(b)(i) of the Policy if it is found to have registered the domain name “primarily for the purpose” of extorting payment from the trademark holder. If the registration is primarily for another purpose, to benefit in another way at the complainant’s expense, then the violation must be matched with a different […]

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Consequences of Transferring Registration, Even From One Privacy Service to Another

Under the UDRP the losing respondent has 10 days to commence an action in a court of law in a “mutual jurisdiction” to take advantage of the regulatory stay [paragraph 4(k) of the Policy]. Otherwise, the domain name is transferred to the complainant and the respondent’s remedy under the Anticybersquatting Consumer Protection Act is for […]

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The Principle that a Prior Registered Domain Name (In the Hands of the Original Registrant) Cannot Have been in Bad Faith Is Not Nullified by the Domain Name Being Passively Held

“When a domain name is registered before a trademark right is established, the registration of the domain name was not [indeed, could not have been] in bad faith because the registrant could not have contemplated the complainant’s non-existent right,” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.1. Only “when the respondent […]

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Reasonable Grounds to Believe that the Use of the Domain Name is Fair Use or Otherwise Lawful

Of 19 UDRP proceedings commenced by SAP AG 5 were terminated and in 9 the Panels ordered the disputed domain names transferred. The remaining 5 complaints including the most recent SAP AG v. Stephen M Meli, D2010-0760 (WIPO July 27, 2010) were denied. It is not bad faith to incorporate another’s trademark where the use […]

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Supplementing the Complaint to Request a Three Member Rather than a One Member Panel

The Panel in Facebook, Inc. v. Amjad Abbas, DME2010-0005 (WIPO July 13, 2010) addresses an issue of first impression, namely whether a complainant can change its mind after electing a one member panel. The issue has two branches, whether A) the Center (meaning the administrative wing of the Provider) has power to allow amendment of […]

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Creating a False Record to Capture a Prior Registered Domain Name

We associate opportunism with respondents, but it equally describes a class of complainants who overreach their trademark rights in an attempt to capture prior registered domain names. The tactic may even be successful where the respondent fails to respond to the complaint. Between 75% and 80% of UDRP filings are uncontested, which gives ample opportunity […]

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Burden of Proof for Right or Legitimate Interest

Complainant has the initial burden of proof while respondent has the burden of persuasion on the right or legitimate interest in the domain name. Let us look back to one of the key rules of a UDRP proceeding, namely shifting the burden on proof of a prima facie case. It is expected that the party […]

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Judicial Efficiency in Declining to Continue Analysis Where the Complainant Lacks Proof to Support its Case

I noted yesterday that secondary meaning is earned not presumed. Panels determine first whether there is jurisdiction. If there is, they continue; if there is not, the proceeding is brought to an end. There may well be dispute over the domain name, but it belongs in a civil court of law applying different legal standards. […]

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