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Archive | 2015

Certifying to Merit of Cybersquatting Claim Where There is None

There is no merit to the belief held by some trademark owners that domain names corresponding to trademarks infringe their exclusive rights on the Internet regardless the date of registration. For the ACPA the threshold issue is whether the trademark was “distinctive at the time of the registration of the domain name.” Although no such […]

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When is Re-Registration or Renewal of Registration Actionable Under the ACPA?

Jysk Bed’N Linen v. Dutta-Roy , 13-15309 (11th Cir. December 16, 2015) Although the UDRP and the ACPA have different architectures—the former is a conjunctive while the latter is a disjunctive model—and have the same purpose of combatting cybersquatting, they compel different results in some fact situations. This is particularly the case when the question […]

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Entitlement to Short Letter Domain Names

Claims of cybersquatting for registering and holding two and three letter domain names have a history dating back to the first year of the operation of the UDRP. The earliest examples are <daf.com>, Tenenhaus Philippe v. Telepathy, Inc, 94355 (Nat. Arb. Forum May 17, 2000), and <kis.com> Kis v. Anything.com Ltd, D2000-0770 (WIPO November 20, […]

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UDRP is Niche Forum for Cybersquatting, Not Trademark Infringement

The UDRP is not a general court for trademark infringement, but a niche forum for a particular kind of infringement. It authorizes Panels to determine whether domain names incorporating a complainants’ trademarks violate the terms of s respondent’s warranty, i.e. that it “will not infringe upon or otherwise violate the rights of any third-party.” The […]

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Domain Names Combining Complainant’s Marks with Marks of Third Parties

Where there are multiple, related complainants each will be entitled to the domain name in which it has a right and a right to the remedy it elects. However, where the accused domain name is composed of trademarks owned by different parties, but only one is complaining the question turns on whether the complainant is […]

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Passive Holding of Domain Name Not Grounds for Forfeiture

It is an interesting phenomenon that complainants and their counsel continue to believe that trademark owners have greater rights to corresponding domain names than domain name holders who have priority of registration. Their arguments unfold in a familiar line of false reasoning that inactivity of use and renewal of registration (to take just two contentions) […]

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Do Changes in the Whois Registry Amount to New Registration?

Some trademark owners see changes in the Whois Registry as an opportunity to seize control of domain names corresponding to their trademarks. The issue boils down to the identity of the domain name holder; whether it is the same or different person than the original registrant. This is important because intentions of successors who have […]

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Dictionary Words Generic; In Compound Distinctive

Dictionary words are generic when employed denotatively for their ascribed meanings, therefore incapable of trademark status, but can nevertheless acquire distinction if used connotatively as arbitrary or suggestive symbols. It follows too that  compounds composed of generic terms are not condemned to being generic simply because of their parts; can in fact be distinctive and […]

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Noteworthy Domain Name Decisions 2015

Mr. Levine is the author of a treatise on trademarks, domain names, and cybersquatting, Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting under the Uniform Domain Name Dispute Resolution Policy. (2015, 558 pages). Learn more about the book at Legal Corner Press. Available from Amazon and Barnes & Noble.  Update […]

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No Standing for Similar that is not Confusingly Similar

If a domain name is similar but not confusingly similar to the trademark in which complainant has rights the complaint must be dismissed for lack of standing. This makes sense because if the string of characters forming the second level domain is identical in part but not confusing as to the whole of the trademark […]

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Research of Facts and Law under the UDRP

Ordinarily in commercial alternative dispute resolution processes arbitrators are not authorised to independently do factual research, and there is continuing disagreement about what if any legal research can be done. Best practice is firm about factual research; and less certain about legal research. It is generally understood that a neutral’s role is limited to assessing […]

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Next Book Option In Publishing Contracts: Benign to Toxic

Co-author Gerald M. Levine In May 2015 the Authors Guild announced its “Fair Contract Initiative.” So far it has addressed royalty rates on e-books (should be 50% of net receipts not 25% as it presently is), term of license (should be less than term of copyright which is the default term for print books), name […]

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Role of Credibility in Assessing Claims and Defenses

In a number of UDRP cases decided this year several turned on the issue of credibility, sometimes involving “advocate’s hyperbole” and at other times outright misdescription of the website’s content. The Chancellor, Masters and Scholars of the University of Cambridge v. Kirkland Holdings LLC., D2015-1278 (WIPO October 5, 2015) (<cambridge.com>). In many of these cases […]

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Safe Harbor for Service Providers

This article was first appeared in the New York Law Journal, September 30, 2015 GoDaddy.com, which is the largest registrar in the US with over 60 million domain names under management, has been the prevailing defendant in two major lawsuits under the Anticybersquatting Consumer Protection Act (ACPA), Petroliam Nasional Berhad decided in 2013 and Academy […]

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Competing for Domain Names: Registrants vs Trademark Owners

This article first appeared in Industry Today (9/16/2015) Domain names exist solely on the Internet. They are primarily functional elements. Trademarks exist in actual as well as virtual marketplaces. They too are functional when they act as domain names but they have an additional dimension. And therein lie opportunities for infringement of rights and deceptions […]

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Prominent Business Persons and Domain Names

It is a general principle in UDRP jurisprudence (as it is under trademark law) that personal names are not registrable as trademarks, so it follows that a person has no right to a domain name corresponding to his or her name unless the name has acquired distinctiveness by being used in commerce and is recognized […]

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Concurrent Trademark Rights Not Grounds for Cybersquatting

It is out of the ordinary for respondents in UDRP proceedings to have registered trademarks; it is more so that parties should also be in the same business. It may be suspicious that the later to register was unaware of the earlier but domain name registrants are under no duty to search trademark databases to […]

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Failing to Prove Abusive Registration Through Ineptness

Unlike court actions default in responding to complaints is not deemed an admission of liability. Complainant carries the burden to the end. That’s why it’s particularly interesting to read from time to time of disputes in which complainants are utterly inept on the evidentiary demands for proving their cases. Panels have shown little tolerance for […]

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Noteworthy Domain Decisions April to July 2015

Noteworthy Domain Decisions for August 2015 Hugedomains.com, LLC. v. Wills, 14-cv-00946 (D.Colorado July 21, 2015). Plaintiff, earlier Respondent Austen Pain Associates v. Jeffrey Reberry, FA1312001536356 (Forum March 18, 2014), commenced an ACPA action for declaratory judgment that its registration or use of <austinpain.com> was not unlawful under the Act; defendant capitulated to a consent judgment […]

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Good and Bad Faith in Registering and Using Domain Names

Complainant prevails only if it proves conjunctive bad faith. Bad faith use can be inferred if the proof supports bad faith registration but there is no inference of abusive registration the other way around, although as I have pointed out in earlier Blogs there are panelists who go their own way on this issue. There […]

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