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Archive | October, 2010

Initial Interest Confusion, Basis for Abusive Registration

Panels use the phrase “initial interest confusion” in two contexts: “[1] confusion of authorship upon reading the content of a website and [2] confusion of an Internet user who is seeking the mark owner’s website but is attracted to the alternative website by its similarity (in this case, identity) with a recognized mark,” Justice for […]

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Contract Provisions: The Out of Print and Reversion of Rights Clause

Gerald M. Levine, Co-Author Most publishing contracts provide for both the establishment and termination of the author/publisher relationship.  Why should an author be concerned about the “out of print” clause?  The Grant of Rights in the contract is likely to be “for the full term of copyright plus renewals and extensions.”  The current term of […]

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Legitimately Offering a Domain Name for Sale by a Transferee from a Related Transferor

A respondent is ordinarily responsible for its behavior immediately upon registration and chargeable for its use of the domain name thereafter. I previously noted October 25 that transferee respondents from related parties are treated differently from respondents acquiring their domain names upon non-renewal from prior holders. La Société des Bains de Mer et du Cercle […]

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Unfair Use of an Association’s Trademark

A respondent may, as has frequently been pointed out, rightfully register a domain name incorporating a complainant’s trademark if authorized by contract or permitted under a nominative fair use theory. If neither, the registration is abusive. In National Association of Realtors v. John Fothergill, D2010-1284 (WIPO September 20, 2010) the Panel held that the domain […]

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Acquiring Domains After Non-Renewal by Prior Registrant

Transferees who acquire domain names from related entities or by purchase and registrants who independently acquire their domain names after non-renewal by prior registrants are treated differently. The former inherit bad faith use (the alleged good faith transfer is implicitly tainted); the latter, untainted by any prior bad faith use, start anew.  Just how heavy […]

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Proving Trademark Acquisition

“Pay-per-click websites” (noted the Panel in Business Filings Incorporated v. John Thalacker D/B/A Traffico, D2010-1332 (WIPO October 1, 2010)) “are often found not to be bona fide offerings of goods or services, but this is not always the case.” It continued that the “issue turns primarily on the content of Respondent’s website at a particular […]

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Misusing Pejorative Plus Trademarks for Commercial Gain or to Denigrate a Competitor

Trademark + pejorative signaling criticism of the goods or services of a trademark holder are a powerful irritant. If the composition complies with the privilege of fair use a pejorative is an affirmative defense. However, the rules are unaccommodating for any infraction. This has been illustrated in a number of UDRP cases unsuccessfully defended. In […]

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Acquiring Domain Name through Merger or Acquisition

A transferee is likely to take possession of a disputed domain name under conditions factually different from the original registrant. It inherits its transferor’s bad faith use without any advantage of its good faith (were that the case) registration. This applies equally to transferees unrelated as to those related to the original registrant. Unless the […]

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Trademarks Composed of Descriptive Phrases

With qualification, descriptive phrases are not denied trademark registration but they are less protected from concurrent users. That is clear from such trademarks as BABY ESSENTIALS, the subject of A.D. Sutton & Sons, Inc. v. BABYESSENTIALS.COM c/o Nameview Inc. Whois IDentity Shield / Vertical Axis Inc., D2010-1125 (WIPO September 22, 2010). Other examples have been […]

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Language of UDRP Proceedings

Rule 11(a) of the Rules of the Policy is a two clause provision. The first clause provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.” The second clause dilutes the imperative of the first by […]

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Bad Faith Registration Inferred from Non Use of a Descriptive Phrase

It is a misapprehension of domain name jurisprudence to believe that the registration of a descriptive phrase that is identical or confusingly similar to a trademark is ipso facto legitimate. Legitimacy depends on the website’s content, possibly the parties’ relationship and their geographic locations. That the domain name is inactive is not a barrier for […]

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Post Termination Right or Legitimate Interest in Domain Name

As a general rule when “the licence of distribution arrangement has terminated, the respondent is generally found to have no rights or legitimate interests in a domain name which was only used in the respondent’s capacity as licensee or authorised distributor,” SPECS GmbH v. SPECS Scientific Instruments, Inc. d/b/a SPECS Technologies Corporation, D2009-0308 (WIPO April […]

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Concurrent Rights to Trademark and Business Name

Trademark law recognizes with some qualification that two parties can be entitled to use similar, even identical lexical strings where the concurrent user offers the public 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 […]

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Unexplained Delays in Prosecuting a Claim Under the UDRP

A complainant’s unexplained delay in prosecuting a claim under the UDRP is not generally prejudicial to its relief, except where in the interim “the lapse of time coupled with the existence of circumstances … make it inequitable to enforce a claim,” Pamela Anderson v. Alberta Hot Rods, D2010-1144 (WIPO September 8, 2010). This is an […]

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Protectability of Geographic Indicator Trademarks in a Domain Name Dispute

Turning the issue around from yesterday’s Note, instead of geographic indicators joined to trademarks, consider geographic trademarks and their strength. In domain name disputes geographic indicators as trademarks are heavily discounted, Atlantic Station, LLC v. Dargan Burns III, D2010-0996 (WIPO September 14, 2010) (<>, <>, <>, <> and <>); Atlantic Station, LLC v. Dargan Burns […]

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Adding a Geographic Indicator to a Trademark Does Not Distinguish the Domain Name

Adding a geographic indicator to a trademark does not distinguish a domain name; is unlikely to support a right or legitimate interest; and generally the domain name is found to have been registered in bad faith. “Usa” added to “rangerover” and “denver” to “univision” are two recent examples. But the complaint involving “uae” added to […]

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Uses and Abuses of Privacy Services

Use of privacy services is a merely one factor among others to be taken into consideration when assessing bad faith. On the one hand there are respectable reasons for protecting one’s privacy, but the service can also mask illicit conduct. Failure to disclose the beneficial owner may be a factor in determining bad faith, BzzAgent, […]

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The Duty to Search for Potentially Conflicting Trademarks

A person is free to choose any string of phonetic elements or numbers as a domain name as long as its choice does not infringe the legal rights of any third party. In making its choice, the registrant represents and warrants as such in the registration agreement. The question, however, is, What duty does the […]

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What is Fair Use?

Gerald M. Levine, Esq, co-author The U.S. Constitution grants to authors and inventors for “limited times … the exclusive right to their respective writing and discoveries.” Fair use is an exception to a copyright holder’s right to exclusive use of an original work and works derived from it. The Fair Use privilege is embodied in […]

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Statements Against Interest and Admissions in Correspondence Between Parties

Correspondence between the parties can prove decisive when the respondent makes admissions against interest, although the alleged prejudicial “statement must be considered in the context of the email of which it is a part,” Estate Diamond Exchange, Inc. v. Thomas Hull, D2010-1171 (WIPO September 16, 2010). In context in this particular case the statement did […]

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