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Archive | 2013

Combining Second Level Domain and Top Level Suffix

The following was originally published as a guest blog on Neil Brown’s website, Domain Times on December 15, 2013. The suffix to the right of the dot, whether gTLD or country code, has no source indicating significance, but is a functional necessity panels generally disregard in comparing the second level domain with the trademark. That […]

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Compelling Arbitration of Nonsignatories

First published in Dispute Resolution Section Blog of the New York State Bar Association December 13, 2013 (http://nysbar.com/blogs/ResolutionRoundtable.html) A nonsignatory to an arbitration agreement is not generally subject to it and cannot be compelled to submit to the proceedings, but there are equitable circumstances that may warrant a different result. MAG Portfolio Consultant, GMBH v. […]

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Succcessor Proving Ownership of Trademark

Ordinarily, a complainant proves ownership of a trademark by displaying a certificate of registration from a national registrar; or, if unregistered by proving use in commerce for a qualified period of time. Having documentation and attaching it to the complaint is easier than having to prove a right which entails proving a reputation reaching back […]

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Good Faith Registration Bad Faith Use

One could argue, totally at odds with UDRP precedent, that it is unfair of a domain name registrant to renew registration of a passively held domain name which unfairly prevents a later acquiring trademark owner from using the corresponding domain name for its business. Good faith registration followed by bad faith use and renewal of […]

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Registering Domain Name for Legitimate Business Purpose

There can be no violation of owner’s trademark rights where there is a legitimate business purpose for registering the disputed domain name. Anti-cybersquatting proscriptions apply to unfair business practices and deception, hence the intense focus on purpose for registering a particular combination of words. A good illustration is presented in Maria Guadalupe Arvizú Ramírez v. […]

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Internet Subscription Libraries

Co-author, Gerald M. Levine New Internet subscription libraries are offering to “lend” digital books based on subscription models that brick and mortar lending libraries in England invented in the 19th Century.  For $X dollars per time period subscribers gain access to vast collections of backlist and self-published books at less cost and with none of […]

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Predictability Depends on the Panel You Draw

A general view formed early in the UDRP jurisprudence is that for predictability decisions “should consist of more than, it depends what panel you draw’.” Time Inc. v. Chip Cooper, D2000-1342 (WIPO February 13, 2001) (<lifemagazine.com>). The goal for consistency is achieved through “a strong body of precedent” which “is strongly persuasive” even if not binding. […]

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Arbitrators Exceeding Scope of Authority

First published in Dispute Resolution Section Blog of the New York State Bar Association October 15, 2013 (http://nysbar.com/blogs/ResolutionRoundtable/2013/10/) An arbitratator’s conduct or decision must be egregious before an appelate court finds the panel exceeded the scope of authority. Parties in two recent cases, one in the Appellate Division, 1st Department and the other in the […]

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Limits of Protected Speech

The question of protected speech is whether the protection is to the domain name or the contents of the website. There are two official “views” about critical speech. Both recognize (at least, generally) that use is “fair” if it is foretold or announced in the domain name and expressed in the content. Thus, “trademark+pejorative.com” that […]

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Personal Names Not Protected

UDRP’s limited jurisdiction extends to personal names only if they qualify as trademarks. Some attempt has been made to justify widening the included class but the argument in its favor has failed to persuade other panelists and the consensus remains undisturbed. If the personal name is not in commerce as the source of goods or […]

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Reaching Safe Harbor under the UDRP

Respondent reaches safe harbor under the UDRP either by proving good faith or complainant is unsuccessful in proving bad faithParagraph 4(c)(iii) of the Policy is backward looking; that is, it rejects any claim of future, non infringing plans for the domain name. It contrasts with paragraph 4(c)(i) which includes a forward looking defense based on […]

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Deliberate Misspellings of Trademarks

Typosquatting is the term applied to deliberate misspellings of trademarks. A high percentage of UDRP disputes involve domain names that are “virtually” identical (complainant’s characterization in SAP AG v. PrivacyProtect.org / John Harvard, John Havard, D2013-1097 (WIPO August 9, 2013)), but more properly described as confusingly similar in making minor variations to the mimicked trademarks. […]

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Benefit of Doubt in Decision Making

Close legal questions (or, questions said to be close and difficult) pose a particularly hard problem because they open the way to benefit of doubt in decision making. This is particularly evident in three member panel decisions with dissent, although if doubt is present the benefit of doubt should favor the respondent since the complainant […]

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Arbitrators’ Charging Lien

Arbitrators’ Charging Lien was originally published in Resolution Roundtable (New York State Bar Association, Dispute Resolution Section) on August 13, 2013 A charging lien is sttutory mechanism for protecting the value of services which New York has now been extended to arbitrators.  This has been a necessary evolution.  Over the past few years there has […]

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Disputes Within and Outside the Scope of the Policy

The Policy is tailored for cybersquatting disputes. Other disputes are outside the scope of the Policy, but within the scope panelists should be consistent in their reasoning of the issues. Panelists’ general view formed early in UDRP the jurisprudence is that the UDRP should not be a roulette wheel. It “should consist of more than, […]

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Need for Precise Language in Drafting Arbitration Clauses

Need for Precise Language in Drafting Arbitration Clauses first appeared on the New York State Bar Association, Dispute Resolution Section, “Roundtable” June 24, 2013 Parties elect arbitration but tend not to craft their language in drafting arbitration clauses. This is a common mistake as parties learn from court decision. Case law instructs just how important […]

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Appointing UDRP Panels and Disqualification

ICANN certified providers are solely reponsible for appointing UDRP panels. Sole member Panels are appointed by the Provider. The practice differs from commercial arbitration where providers distribute a list of candidates from which parties are invited to make their selections. In those cases the provider appoints a jointly selected candidate to hear and deter mine […]

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Recapturing a Domain Name Fraudulently Transferred

In recapturing a domain name fraudulently transferred there is a common theme to losing it by inadvertent lapse of registration. In both, a domain name formerly registered in complainant’s name is latterly found in another’s, but the different factual circumstances demand a different approach to assessing intention. While a respondent’s post lapse registration is not […]

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Trademarks Composed of Dictionary Words

See Anthology of Commentaries — 2014 Trademarks composed of dictionary words are not protected against uses that take advantage of their semantic meanings. Dictionary words are the least protected outside of their particularly associations. On the classification scale, fanciful, arbitrary and suggestive are at the strong end of the scale, while descriptive and generic (if […]

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Assessing Closeness of Domain Name to Trademark

The UDRP analysis begins with assessing the closeness of the domain name to the trademark. Identical is letter by letter the same; similar is a string that can be confused with the trademark. A complainant has standing to maintain a proceding only if it can show that the  accused domain name raisees the probability of […]

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