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Archive | 2014

Legitimate Activity and Legitimacy of Passive Holding in Defending Claims of Cybersquatting

 See Anthology of Commentaries — 2014 Of the three paragraph 4(c) defenses the first and third share a common element, namely that the domain names must resolve to active websites. Under neither head can a respondent passively hold a disputed domain name and prevail under paragraph 4(a)(ii) of the Policy. Paragraph 4(c)(i) requires proof of […]

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UDRPs Evidentiary Demands

See Anthology of Commentaries — 2014 The UDRP is essentially composed of three blocks of checklists that lay out the evidence each party is expected to offer on its claim or defense. Paragraphs 4(a)(i – iii) detail the requirements a trademark owner must satisfy to prove its claim: it has to have standing to maintain […]

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Proving Cybersquatting on Weak Trademarks

See Anthology of Commentaries — 2014 Proving cybersquatting on weak trademarks rises in difficulty as the marks descend the classification scale. Dictionary words such as “bespoke”, “emoney” and “upbeat”, descriptive phrases such as “historic hotels” and “broadband voice” , combined words such as “md online”, “master page” and “great courses” and compounds such as in […]

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Standard for Declaring Reverse Domain Name Hijacking

See Anthology of Commentaries — 2014 Except where complainant’s claim is truly egregious for which there can be said to be a “settled policy”––Happy as Clams, Inc., a California Corp., DBA Date Like a Grownup v. Heather Dugan, D2014-1655 (WIPO November 1, 2014)––there is no fixed standard for declaring reverse domain name hijacking. This is […]

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Defense of Free Speech Under UDRP Depends On the Panel You Draw

It may be surprising to learn that defense of free speech under UDRP depends on the Panel you draw; but there’s an explanation, which is that not all panelists’ views are harmonized as happens in common law courts that follow a strict precedential regime imposed by appellate authority. “The panel you draw” warning comes from […]

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Outside the Scope of the UDRP

Disputes declared outside the scope of the UDRP affirms the Policy’s limited jurisdiction. The Policy is designed to address claims of cyber infringement of an owner’s trademark, not to determine trademark infringement or claims of business disputes. To be sure the demarcation between disputes within and other outside the scope of the Policy can be […]

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Using Trademarks to Market Professional Services

Attorneys have tried using trademarks to market professional services, but the outcome applies to all professionals as the surgeon found out in Accuray Incorporated v. Sanjay Mongia / Nuero Network, FA1409001582340 (Nat. Arb. Forum November 3, 2014).  In this case Respondent argues that incorporating a trademark is not an abusive registration. It should qualify as […]

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Financial Consequences of Cybersquatting: A Cautionary Tale

Except for the time and expense of having to defend claims of infringement there are no severe financial consequences of cybersquatting under the Uniform Domain Name Dispute Resolution. The UDRP is essentially a summary proceeding for evicting domain names from their cyber spaces, either cancelling registrations of infringing domain names or transferring the registrations to […]

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Punitive Damages in Arbitral Disputes

See Anthology of Commentaries — 2014 Published on the Resolution Roundtable Blog, sponsored by the Dispute Resolution Section of the New York State Bar Association, October 21, 2014. Punitive damages in arbitral disputes may be available as a remedy but the question is, Who gets to decide the issue, court or arbitrator? There have been […]

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Characters As Protectable Assets Do Not Survive Copyright Termination

Co-author Gerald M. Levine Characters as protectable assets do not survive copyright termination of the works in which they appear even though they may continue to live on in works that continue in copyright.  All works published prior to January 1, 1923 are in the public domain, a vast repository of cultural wealth available for […]

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Registering Trademark Without First Obtaining Corresponding Domain Name

Complainants who register trademarks without first obtaining corresponding domain name have no actionable claims against respondents already holding corresponding domain name, at least under the UDRP as traditionally applied. What is meant by “traditional” is that complainant has to prove bad faith in the conjunctive. Yet, despite this obvious truth that trademark rights have to […]

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Choice of Law: Characterization of Facts Determines the Outcome

Published on the Resolution Roundtable Blog, sponsored by the Dispute Resolution Section of the New York State Bar Association, October 7, 2014. Although there may be no disagreement about the facts, what law applies often depends on how the facts are characterized. An illustration of how characterization of facts determine the outcome is seen in […]

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No Consensus for Reverse Domain Name Hijacking

There is no consensus for reverse domain name hijacking; rather, there is a diversity of views about the conduct that would support it. Rule 15(e) authorizes the Panel “to declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding … [i]f after considering the submissions […]

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Evidentiary Demands in a UDRP Proceeding

To succeed in a UDRP case parties must pay attentiion to the evidentiary demands of the process. Complaints are dismissed or denied for three reasons, either complainant 1) lacks priority for its trademark over the domain name; 2) failed to marshal evidence sufficient to prove abusive registration, or 3) respondent has rebutted complainant’s allegations that […]

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Opportunistic Registrations of Domain Names

This article, “Opportunist Registrations of Domain Names: What Is Going On, and What Tools Are Available for Trademark Owners,” appears in Bright Ideas, a publication of the Intellectual Property Law Section of the New York State Bar Association, Fall 2014, Vol. 23, No. 2. Bright Ideas Gml Article I. Introduction In June, 2011, the Board […]

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Dictionary Words, Compounds, Phrases and Acronyms

Trademark dictionary words, compounds, phrases and acronyms (or strings of arbitrary letters complainants claim as trademarks) are regularly contested in UDRP proceedings. The registry of trademarks includes numerous dictionary words used fancifully or arbitrarily –– “apple”, “blackberry,” and “orange” (just to name some in the fruit category) –– whose marketplace associations for particular sources of […]

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Abuse of Process in a UDRP Proceeding

Abuse of process in a UDRP proceeding carries risk for reverse domain name hijacking if respondent appears and proves complainant has falsified the facts. There have undoubtedly been cases in which complainant prevails solely because respondent has defaulted — let us call it the “no show” strategum — where a defense may have changed the […]

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Non-Authorized Use of Trademark

Non-authorized use of trademark is not prohibited as long as the use is fair, but “fair” is narrowly defined under UDRP/URS jurisprudence although it could be for a commercial purpose. So, for example, it is not improper to incorporate a trademark where the domain name “seek[s] to communicate the nature of the service or product […]

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Laches Defense to Cybersquatting Claim

Lapse of time versus a laches defense to cybersquatting claim in a udrp case is likely to benefit domain name holder unless the trademark is well-known or famous. While Panels are in accord that waiting too long to initiate a complaint makes it difficult to prove bad faith registration they are split on whether laches […]

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