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Archive | 2012

Vendor/Agent Holding Domain Name Hostage for Alleged Nonpayment of Fees

In a federal action under 15 U.S.C. 8131 (Cyberpiracy protections for individuals) the district court for the Middle District of Florida held that “cyber-extortion is not a permissible way of recovering a debt”), Salle v. Meadows, 6:07-cv-1089-Orl-31 (August 6, 2007). No federal cases on the “debt” issue have been found under Sec. 1125(d), but there […]

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Abusive Registration of Personal Names

Personal names that are unregistrable as trademarks have no actionable claim under the UDRP for abusive registration of their names. Attorneys (but not their law firms) are in no better position than other professionals. There has to be a trademark right. It does not come with admission to the Bar; from longevity in practice; from […]

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Invoking UDRP’s Mutual Jurisdiction Under Paragraph 4(k) and Rule 18(a)

Registrants in acquiring domain names and trademark owners in complaining of abusive registration are both required to submit to the jurisdiction of stipulated courts with regard to the adjudication of disputes. The requirement in the registration agreement is traceable to ICANN’s Registration Accreditation Agreement with registrars. Paragraph 3.7.7.10 reads: “For the adjudication of disputes concerning […]

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No Standing for “Intent to Use” Applications

Complainants cannot claim standing for intent to use applications since the first use in commerce is prospective. This applies to both the UDRP and the ACPA. While trademark registration on the Principal Register is prima facie proof of validity and some consideration is given to registrations on the Supplemental Register on proof of acquired distinctiveness, […]

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Mixed Use (Vanity Email and PPC) of Surname Trademarks

Registering surnames for operating a vanity email service is a legitimate business model. The problem comes when the trademark is well-known or famous and respondent also deploys the domain name for an advertising website. Tucows.com Co. is at the center of this kind of dispute. It has succeeded where the use is consistent with the […]

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Allegations of Cybersquatting of Personal Names

The Report of the Second WIPO Internet Domain Name Process, The Recognition of Rights and the Use of Names In the Internet Domain Name System, dated September 3, 2001 concludes that “the application of the UDRP to the protection of personal names [is authorized only] when they constitute trademarks,” Paragraph 179.  Despite the exclusion, UDRP […]

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Author’s Right to Compensation for Intellectual Production

Co-author, Gerald M. Levine Authors’ incomes generally come from royalties and licensing revenues for works protected by copyright. He or she has a right to compensation for intellectual production.  Section 102(a) of the U.S. Copyright Act states that “original works of authorship fixed in any tangible medium of expression” are protected by copyright.  By definition […]

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Domain Names Composed of Random Letters and Acronymic Trademarks

Domain names composed of few letters are extremely prized; the more so as the number of third parties legitimately claiming a right to them increases. The larger the number of potential claimants the less likely any one of them can prevail in a UDRP proceeding. Random letters and even acronymic trademarks are likely to be […]

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Offer to Purchase vs. Counter Offer

It makes a difference which party initiates a negotiation to sell or purchase a disputed domain name. In SIX Group AG v. Xedoc Holding SA, D2012-1548 (WIPO October 11, 2012) the Complainant’s cause for complaint concerned Respondent’s redirected use of as a pornographic website . But, “six” is a weak mark: “there is extensive third […]

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Complainant’s Burden to Prove Knowledge and Intent

Respondent’s default to some extent lightens complainant’s burden to prove knowledge and intent while its appearance and rebuttal testimony heightens it. Rule 15(a) provides that “[a] Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law […]

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Registration “Before Notice” and Offering Bona Fide Goods or Services Good Defense to UDRP Complaint

While merely registering and holding a domain name confers no right or legitimate interest, a domain name can be legitimized if 1) “before any notice … of the dispute”, 2) respondent “has used or made demonstrable preparations to use the domain name”, and 3) “in connection with a bona fide offering of goods or services.” […]

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Why Should a Complainant Who Has No Actionable Claim Be Excused of Wrongful Conduct in Maintaining a UDRP Proceeding?

A claim of reverse domain name hijacking (RDNH) ultimately rests on complainant untruthfully certifying 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].” Paragraph 3(b)(xiv) of the Rules of […]

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Laches (+ 4(a)(ii)) = 4(c)(i)

Panels in the formative cases held that there was “no room for general equitable doctrines under the Policy such as would be possessed by Courts in common law jurisdictions.” Edmunds.com, Inc. v. Ult. Search Inc., D2001-1319 (WIPO February 1, 2002). The Panel in The Hebrew University of Jerusalem v. Alberta Hot Rods, D2002-0616 (WIPO October […]

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Denying Safe Harbor to Domain Names that Resolve to a Criticism Website

See Anthology of Commentaries — 2014 Question 2.4 of the WIPO Overview of WIPO Panel Views on Selected U.D.R.P. Questions asks, “Can a criticism site generate rights and legitimate interests?” The answer is Yes, but.  The “but” could depend on the Panel assigned to resolve the dispute; it could also depend upon whether the criticism […]

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Typosquatting and Appearance of Typosquatting

A respondent telegraphs both intent and knowledge when it squats on a trademark by creating minor typographical variations. There are a number of recent examples of variations on COMERICA: as in (reversing “m” and “e”), (adding an additional “e” before “i”), (doubling letters) and (selecting letters adjacent on the qwerty keyboard, “u” and “i” ). […]

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Distinguishing “Unfair” Commercial and Nominative Fair Use

Nominative use of a trademark is permissible when it is fair. It is fair when the domain name identifies the respondent’s business rather than competing with the trademark owner. It is commercial by definition. Confusion is not a disqualification otherwise there could be no nominative use, but it can be minimized through disclaimer. Besides, Panels […]

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Wariness in Granting Rights to Aggregators

Originally published as a Guest Blog on Writer Beware® September 7, 2012 Co-author, Gerald M. Levine There is a reason for authors to be wary in granting permission for their blogs to be published by aggregaters. Authors create the content blog aggregators need for their web collections. Each gains in different ways. For the aggregator, […]

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Recapturing Inadvertently Lapsed Domain Names

Ownership of domain names can be tenuous. They can be lost beyond recapture through inadvertence. Trademarks, at least the registration for trademarks can also be lost, but more easily regained if not abandoned. Domain names are different; they are not “owned” but rather held for a stipulated period and their continued holding depends on renewal […]

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Consequences of an Unsatisfactory Manuscript

Co-author, Gerald M. Levine The traditional publishing process begins with an editor’s enthusiastic response to an author’s outline, proposal, and sample chapter, followed by an offer and contract from the publisher.  Once the contract is signed the focus shifts to the quality of the final manuscript. The publishing contract includes a “d & a” (abbreviation […]

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The Importance of Timing in Asserting Priority in a UDRP Dispute

Timing is a critical factor in determining whether a complainant satisfies its first and third UDRP requirements. When parties’ acquire their respective rights ultimately determines whether or not the complainant has standing to maintain an administrative proceeding and if it does whether it can prove bad faith registration. So, for example, an application to register […]

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