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Archive | March, 2011

Credibility as a Factor in Determining Bad Faith

Fortuity can enter into the choice of name, but it is tenuous when the trademark is an arbitrary collation and less suspicious when it is generic or descriptive. Take for example MOWITANIA, the Complainant’s trademark in Mowitania Wendt & Molitor GbR v. Eric Clermont, D2011-0052 (WIPO February 22, 2011). According to the Complainant the “mowi” […]

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Trademark Infringement and Dilution Not Within Scope of the Policy

In denying relief to a trademark holder for a claim that exceeds the Policy’s scope Panels explain that “the decision should not be read as a substantive decision on the merits of any trademark infringement claim,” Intertek Group Plc. v. ADFA Co., D2010-2128 (WIPO March 8, 2011). This is because the UDRP proceeding is not […]

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Business Disputes Outside the Scope of the Policy

A reasoned decision that a dispute is outside the scope of the Policy has the effect of leaving the domain name with the respondent. It is also a juridical first look at the merits of the case based on the documentary and written testimonial evidence marshaled by the parties to support their respective claims. Both […]

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Establishing Secondary Meaning for Unregistered Marks

Paragraph 4(a)(i) of the Policy requires a complainant to demonstrate that it has a trademark. If registered, the requirement is easy of proof, and although an unregistered trademark is no less entitled to protection, 15 U.S.C. §1125 (Section 43 of the Lanham Act), distinctiveness is not presumed; protection must be earned. It has been noted […]

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The Line Dividing Infringing from Legal Conduct is Sometimes Difficult to Draw

I briefly mentioned Quester Group, Inc. v. DI S.A., D2010-1950 (WIPO February 14, 2011) in my Tuesday March 15 Note and think it worth another visit. The Complainant is in the business of selling guitars; the Respondent is in the business of aggregating links for buyers of guitars. It is mainly interesting because of the […]

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Benefit of the Doubt on the Issue of Bad Faith Favors the Respondent

Since the complainant has the burden of proof, any doubt that the respondent registered and is using the domain name in bad faith necessarily favors the respondent. Doubt is the consequence of an insufficiency of evidence. The most dramatic illustrations are cases in which the complainant has failed over many years to police its trademark […]

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Electronic Rights: Verbatim Text Editions and Multimedia Products

About electronic rights” there are two fundamental questions: What are electronic rights? And, Should an author grant or retain them? “Electronic rights” is shorthand for a basket of rights and multiplicity of products including 1) verbatim text editions delivered through multiple platforms; and 2) non-verbatim multimedia products including interactive educational or entertainment CD-ROMs and DVDs, […]

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Inadvertent Lapse of Domain Name Registration

Inadvertent lapse renewing domain name registration has consequences that have to be understood by both the loser and finder.  Some respondents believe that registering lapsed domain names establishes a possessory right – a finders keepers attitude – invulnerable to a claim of abusive registration. This explains why in VIRBAC v., Mantow Tian, Preventic China […]

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Engaging in Extensive, Widespread Publicity of Website and Service Prior to Domain Name Registration

As a general rule, domain name registrations that precede trademark rights cannot have been in bad faith even though (and when) there is subsequent use in bad faith. However, where the complainant has extensively publicized its goods or services in the same jurisdiction in which the respondent resides and particularly if the respondent is a […]

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Dueling Constructions of the Policy When Panelists Concur as to Respondent’s Bad Faith Use

In words or substance panelists have stated in thousands of decisions that the UDRP is not a trademark court. Its jurisdiction is limited. It is not convened to determine trademark infringement or passing off claims. To find cybersquatting the trademark holder must prove that the respondent both registered (past tense) and is using (present tense) […]

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When UDRP Claims Become Trademark Bullying

Trademark owners have an inherent right to protect their brand but not to a corresponding domain name in all instances and in some instances UDRP claims become trademark bullying. In connection with a study mandated by The Trademark Technical and Conforming Amendment Act of 2010, the USPTO has requested “feedback from U.S. trademark owners, practitioners, […]

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Equal Protection for Unregistered Trademarks, Common Law and Civil Law

Paragraph 4(a)(i) of the Policy is silent on whether the right the complainant is seeking to vindicate must be registered, but panelists quickly concluded that unregistered trademarks were equally protected. It was not necessary for a trademark to be registered by a governmental authority or agency for such rights to exist. The Policy “does not […]

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Invoking the ACPA Against Defendant with Knowledge of Plaintiff’s Use in Commerce Prior to Application for Trademark

The disjunctive feature of the Anticybersquatting Consumer Protection Act makes it less tolerant than the UDRP of registrants of domain names identical or confusingly similar to trademarks. The ACPA is also unlike the UDRP in that it requires the court to qualitatively balance a basket of nine factors, which includes UDRPs four bad faith [rolled […]

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