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Archive | April, 2011

Legitimate Interest in Domain Name Despite Knowledge of Trademark Holder

It is not unusual to find trademarks composed of common terms competing in the cyber marketplace for the attention of Internet users or for an arbitrator to conclude that the coincidence is not an actionable offense. Recent examples include <> (a Biblical geographic place name) [Swedish Orphan Biovitrum AB (pub) v. Inc., D2011-0257 (WIPO […]

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Progressive Encroachment on Complainant’s Trademark

To have a trademark when commencing the UDRP proceeding is sufficient to satisfy the requirement, but not enough to prevail on a claim of progressive encroachment. Domain names registered in good faith and later re-tasked to take advantage of a trademark may be infringing, even be actionable in a court of law, but not abusive […]

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Complainant’s Failure to Police Its Trademark Over a Prolonged Period of Time

Mere delay by a trademark holder in claiming abusive registration is not barred by the doctrine of laches, although this is not without qualification. Paragraph 197 of the WIPO Final Report “recommended that a time bar to the bringing of claims in respect of domain names (for example, a bar on claims where the domain […]

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Fair Use of Trademark for Comment and Criticism

It is fair use of trademark as entry to a website devoted to comment and criticism. Paragraph 4(c)(iii) of the Policy is a two part either/or test. The respondent must show that A) it is using the domain name for “a legitimate noncommercial or fair use” purpose and B) its use is “without intent for […]

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License May Be Evidence of a Right But Is Not Evidence that Licensee Has the Right For Transfer of Infringing Domain Name

“Kineret” or “Kinneret” is the Biblical name for the Sea of Galilee. It is also the name of a drug produced by Swedish Orphan Biovityrum AB allegedly under license from Amgen Inc. While a licensee with authority to protect the trademark may have a right, a bare license is insufficient to maintain a UDRP proceeding. […]

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Google Settlement of Digitization of Books Derailed

A number of Guild members have asked me about the Google Settlement. Those who opted in saw an opportunity for revenue. Those who did nothing probably did not understand that by letting the deadline pass amounted to an opting out. Opt outers are part of a larger class that includes orphan works whose authors (after […]

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Domainer’s Responsibility for Creating a Filtering System to Prevent Competitive Links

Domainers are held to a higher standard for investigating bulk acquisitions. Denying knowledge of the complainant and its trademark is an insufficient defense. They are expected to deploy technology to prevent infringing activity. Paragraph 2 of the Policy reads in part “[i]t is your responsibility to determine whether your domain name registration infringes or violates […]

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