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Archive | September, 2011

The Penalty of Fame: Fans and Adoration

When it comes to fan sites there are two views, the tolerant and the intolerant. The intolerant is illustrated in Tom Welling v. Kenneth Gold, FA1106001393893 (Nat. Arb. Forum July 29, 2011): “Here, the Respondent has used the Complainant’s name without any adornment in a domain name which gives rise to a website. It does […]

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Registration and Re-Registration: Measuring Bad Faith

Panels have long put to rest the argument that re-registration (or renewal of) is equivalent to registration, although there continue to be panelists holding that view. It is illustrated in Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010) (“Based upon the record in this proceeding… [the] Panel deems Respondent’s 2009 […]

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The Dead Are Beyond Suing; Be Wary the Living

Co-author Gerald M. Levine The dead are beyond suing but wariness about the living in recollecting the past should not be discounted. Although intellectual property rights (copyright and trademark) may be asserted by an Estate depending on the law of the state in which the deceased died allegations of invasion of privacy and injuring a […]

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Adding or Subtracting Plural Suffixes

It is often pointed out that small differences (such as adding or subtracting plural suffixes) matter in determining whether a disputed domain name is confusingly similar to a mark, and if it is whether the respondent has any right or legitimate interest in it. This observation of small differences is traceable to a 9th Circuit […]

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Surname Trademarks and Rights to Corresponding Domain Names

Surnames may qualify as trademarks, but to the extent they are common (and provided that there is no intent to take advantage of the complainant or its trademark) they share with trademark owners the right to use them in domain names. Ordinarily, surnames are treated no differently than generic words. (Surnames qua surnames are not […]

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Fair Use is a Statutory Privilege, Not a License

Co-author Gerald M. Levine The U.S. Supreme Court has described fair use as “a privilege in others than the owner of the copyright to use the copyrighted material in a reasonable manner without his consent.” The privilege is statutory with a common law background. The question often put is, How much can the taker use […]

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Regaining a Hijacked Domain Name

“Given the human capacity for mischief in all its forms the Policy sensibly takes an open-ended approach to bad faith, listing some examples without attempting to exhaustively enumerate all its varieties,” Worldcom Exchange, Inc v., Inc., D2004-0955 (WIPO January 5, 2005) (<>). One of the unlisted bases of bad faith is domain name hijacking. […]

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Non Monetary Penalty for Reverse Domain Name Hijacking

See Anthology of Commentaries — 2014 In commencing the administrative proceeding, the complainant certifies “that the information contained in th[e] Complaint is to the best of [its] knowledge complete and accurate [and] that th[e] Complaint is not being presented for any improper purpose, such as to harass [the respondent].” Rule 3(b)(xiv) defines “improper purpose” as […]

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Damages and Penalties for Copyright Infringement

Co-author Gerald M. Levine Copyright infringement has consequences. The Copyright Act protects the integrity of an author’s work by granting the copyright holder certain exclusive rights in both her original and derivative works. It has teeth. This means the author controls who may do what to her work. For example, without a license from the […]

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No Right or Legitimate Interest Accrues from Merely Registering a Domain Name

If merely registering a domain name incorporating a trademark secured a right or legitimate interest “every respondent in proceedings under the Policy would be found to have rights in the respective domain name, without having regard to any other circumstances,” The California Milk Processor Board v. Mattia Fraulini, D2011-1077 (WIPO August 25, 2011). This hints […]

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Acquiescence Not a Defense to Cybersquatting, But Ground for Denying Transfer

The Panel in Iberostar Hoteles Y Apartamentos, S.L. v. N/A, Yuri Smolyansky, Registrant Organization: N/A Registrant / Contact Privacy Inc., D2011-0952 (WIPO August 23, 2011) points out that “[t]he Policy does not provide for a defense of acquiescence.” That is, equitable defenses – acquiescence and laches – are not identified in the subparagraphs of paragraph […]

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Factors In Favor Of and Against a Party

Intention can be deduced from both sound and silence. What a party does and says or the reverse is evidence for and against relief. A respondent may deny knowledge of a complainant’s trademark, but gives itself away through the links on its website. The more well-known the trademark, the greater the likelihood that the respondent’s […]

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