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Archive | July, 2011

Proving a Common Law (Unregistered) Trademark

Relief under the UDRP is not closed to unregistered trademark holders – they too are covered – but the burden to establish that right is significantly greater than for those with certificates. There is also a wide difference within the unregistered trademark ranks as to the evidence necessary to demonstrate the existence of the right. […]

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Ignoring or Failing to Understand the UDRP’s Evidentiary Demands

One appellate panel humorously said of the UDRP proceeding that it was “adjudication lite” lite”because of “its streamlined nature and its loose rules regarding applicable law.” It is certainly lighter than litigation in federal court and rules looser, but it would be a mistake for either party to ignore the UDRP’s evidentiary demands. In many […]

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Complaining Law Firm and Partners: UDRP’s Limited Subject Matter Jurisdiction

Paragraph 4(c)(iii) of the Policy reads: “[Y]ou are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” As the Panel points out in Proskauer Rose LLP v. Leslie Turner, D2011-0675 (WIPO June 30, 2011) […]

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Totality of Facts Analysis of Bad Faith for Common Words and Descriptive Phrases

Friction between holders of trademarks composed of common words or descriptive phrases and domain name registrants rests on the variable meanings of the words and phrases. For the complainant its choice acts as a source indicator; for the respondent the same words convey only their attributed (cultural) meanings. As a general rule respondents have a […]

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Proving Trademark Right: Unregistered and Tradename

Paragraph 4(a)(i) of the Policy is silent on the rights the complainant seeks to vindicate. However, within the first few months of inception Panels concluded that the term “rights” in paragraph 4(a)(i) of the Policy was inclusive. The Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive […]

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Rule 12 and the Panel’s Inquisitional Role in Eliciting Further Statements

The UDRP is essentially an adversary proceeding. Panels have pointed out in response to parties requesting them to inquire and obtain proof that a “party is under a duty to produce evidence in support of its case. It is not for the Panel to undertake an inquisitional role,” Randgold Resources Limited and Randgold & Exploration […]

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Clearing Permissions to Use Photographic Images

I recently reviewed a manuscript of a non-fiction, semi-scholarly work analyzing images of historical prophesy (tarot) cards. The author explained that she wanted to illustrate her book with copies of cards and photographs of ancient artifacts to demonstrate thematic links to the images on the cards. The cards are mostly of ancient provenance, although some […]

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What Factual Circumstances Support Refiling a Complaint?

Unlike some country code Policies, the UDRP makes no provision for an administrative rehearing or appeal by an aggrieved party. The Complainant in Sensis Pty Ltd., Telstra Corporation Limited v. Yellow Pages Marketing B.V., D2011-0057 (WIPO March 15, 2011) (“Sensis 2”) rested its refiling on the following grounds – new evidence indicates that the Respondent […]

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Rights in a Name Do Not Qualify as an Unregistered Trademark

The Panel in Comité Interprofessionnel du vin de Champagne v. Steven Vickers, DCO2011-0026 (WIPO June 21, 2011) posed the following question: “Are Rights in a Protected Designation of Origin or a Geographical Identifier Sufficient as such for the Complainant to make out a Case of ‘Rights’ under Paragraph 4(a)(i) of the Policy?” The Complainant submitted […]

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