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Archive | May, 2011

Denying Relief When the Complex of Facts Exceeds the Scope of UDRP

The UDRP forum is available to trademark holders to resolve disputes of cybersquatting, but not for commercial disputes in which domain names are merely incidental to other claims. Claims for breaches of contract and fiduciary duty that require the Panel to delve into the parties’ legal relations are generally outside the scope of the Policy. […]

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Discretion to Terminate a Proceeding When Parties Have Also Commenced a Court Action

Discretion to Terminate a Proceeding When Parties Have Also Commenced a Court Action The UDRP is not a coordinate forum to a court of law and was not designed to supplant a court of law. It offers has a circumscribed jurisdiction that empowers the Panel to order a domain name cancelled or transferred to the […]

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Recognizing the Rights of a Beneficial Owner of Domain Name Held In Another’s Name

Concealing the identity of the beneficial owner of a domain name is perfectly legal. There is no prohibition for using masking services to protect one’s privacy. In any event, the beneficial owner’s identity is ordinarily (although not always) disclosed prior to the Provider forwarding the complaint and record to the Panel. The qualification “not always” […]

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A Complainant’s Right to Maintain a UDRP Proceeding Not Defeated Because Its Trademark is From a Different Jurisdiction Than Respondent’s Domicile

A complainant has standing to prosecute a UDRP dispute regardless of the jurisdiction in which it acquired its trademark or of the parties’ residencies in different countries. That a trademark is registered or acquired in a different jurisdiction than the respondent’s domicile does not defeat the right to maintain a UDRP proceeding, although it may […]

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Good Faith in Registering Common Words and Phrases Exploited for Their Generic Meanings

It is not illegitimate to use domain names for pay-per-click revenue. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, Para. 2.6: “Panels have generally recognized that use of a domain name to post parking and landing pages or pay-per-click [PPC] links may be permissible in some circumstances, but […]

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Timing, Geographic Distance and Knowledge of Trademark

How does a trier determine that the respondent registered a disputed domain name in bad faith when the respondent fails to make an appearance in the proceeding? Whereas in a court of law a defendant’s default in answering a complaint is an admission of liability, in an ICANN proceeding the complainant prevails only if it […]

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Timing and Acquisition of Rights for “Intent to Use” Trademark Applications

Holders of trademarks composed of common words not infrequently flatter themselves as to their symbols’ distinction and market reach. It is not a per se violation of the Policy for a domain name to be identical or confusingly similar to a trademark. The violation has to be demonstrated. The key factors are timing of the […]

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Rendering a Decision Within the Confines of the Policy

Another panelist silently rejects the retroactive bad faith construction of the Policy which argues for disjoining the conjunctive requirements for bad faith under paragraph 4(a)(iii) of the Policy. “It is unfortunate, in the face of such bad faith use that the Panel has arrived at the decision that the complaint should be denied. However, the […]

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