Top Menu

Archive | Internet Corporation of Assigned Names and Numbers

Fair Use Registration of Domain Names for Artists and Hobbyists

There is in the Anticybersquatting Consumer Protection Act a provision not expressly found in the UDRP (at least, not in so many words) but the concept is nevertheless present in the Policy by construction. I’ll return to the UDRP in a moment. The relevant provision in the ACPA (15 U.S.C. §1125(d)(1)(B)(ii)) reads: Bad faith intent […]

Continue Reading 0

Losing and Reclaiming Domain Names

For registrants who are not trademark owners losing their domain names can be an irretrievable loss; and for trademark owners, perhaps not irretrievable but fraught with uncertainties of recovery. ICANN attempted to solve the problem of inadvertent lapses of registration in the Expired Registration Recovery Policy (ERRP) and its companion the Expired Domain Name Deletion […]

Continue Reading 0

Noteworthy Domain Name Decisions for 2016

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. (Legal Corner Press, 2015) and Supplement and Update (2017). Learn more about the book and Supplement at Legal Corner Press. […]

Continue Reading 0

Quintessential and Other Acts of Bad Faith in Acquiring Domain Names

There are two essential differences between the UDRP and the ACPA, one procedural and one substantive. The procedural difference is quite minor, a mere quirk that Panels adopted by consensus in the early days of the UDRP and deserves no more than a footnote. Under the UDRP, complainants have standing on proof that they have […]

Continue Reading 0

The Respondent Who Specializes in Misspellings

As trademarks composed of dictionary words or descriptive phrases descend the classification scale there is an increasing likelihood of registrants registering and using domain names corresponding to trademarks plausibly lacking knowledge of trademark owners. In the past several months the lower end includes <summertechcamp.com>, <asclepius.com> (God of Medicine), <hopscotch.com>, <topcare.com>, <bankwell.com>, and <unblock.com>. Earlier there […]

Continue Reading 0

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 […]

Continue Reading 0

Noteworthy UDRP Decisions April and May 2015

Traffic Names, Ltd. V. Zhenghui Yiming, In Re: 224.com, 604.com; and 452.com, 1:14cv1607 (E.D. Va, Alexandria Division May 12, 2015). Magistrate’s Report dated April 14, 2015. In Rem action under the ACPA for fraudulent transfer of domain names. Magistrate Judge found: “Plaintiff’s registration of the Subject Domain Names and use of them in business since […]

Continue Reading 0

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 […]

Continue Reading 0

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 […]

Continue Reading 0

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 […]

Continue Reading 0

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 […]

Continue Reading 0

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 […]

Continue Reading 0

Time and Expense Sitting Out Sunrise and Landrush for New TLDs

Sunrise for new TLDs refers to a stipulated period during which trademark owners may defensively preregister domain names prior to the registrar accepting registrations from the general public. This initial period is followed by the connotatively rich “Landrush” in which anyone (for a premium) can register domain names on a first-come-first served basis even if […]

Continue Reading 0

Publication of Domain Name Arbitration

“Domain Name Arbitration, A Practical Guide to Asserting and Defending Claims of Cybersquatting Under the Uniform Domain Name Dispute Resolution Policy,” Gerald M. Levine with a Foreword by Neil Brown QC will be published in Fall 2014. Cover to Domain Name Arbitration Inquire about review copy in pdf.  For more information about Domain Name Arbitration […]

Continue Reading 0

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 […]

Continue Reading 0

Rights Protection of New dot Dictionary Word TLDs

Rights protection for anticipated new gTLDs is an urgent matter. ICANN has recently approved several mechanisms to counter cybersquatting for new gTLDs, including the Trademark Clearing House program (TMCH) which allows brand owners to submit their trademark details for entry into a centralized database and enable the rights holder, after verification, to participate in the […]

Continue Reading 0

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 […]

Continue Reading 0

Deliberative Conversations and the Making of Domain Name Jurisprudence

You may well ask, What does deliberative conversation have to do with the making of domain name jurisprudence? Mention was made of conversation in the Binary/Unitary Note last week. Ideas have to come from somewhere and once they are uttered interlocutors test and return them as received or modified. There are a number of interesting […]

Continue Reading 0

Discretion to Terminate a Proceeding When Parties Have Also Commenced a Court Action

Discretion to Terminate a Proceeding When Parties Have Also Commenced a Court Action The UDRP is not a coordinate forum to a court of law and was not designed to supplant a court of law. It offers has a circumscribed jurisdiction that empowers the Panel to order a domain name cancelled or transferred to the […]

Continue Reading 0

UDRP’s Jurisdiction Does Not Extend to Cases Where a Registered Domain Name is Subject to a Legitimate Dispute

The UDRP offers a forum with limited jurisdiction to resolve a particular type of dispute in which a domain name registrant has allegedly misappropriated a trademark for commercial gain at the holder’s expense. The Policy does not presume to adjudicate claims for trademark infringement or business disputes that concern more than the domain name. The […]

Continue Reading 0

Follow

Get every new post delivered to your Inbox

Join other followers:

4/xVVyQrMpFFp6VcOTT2qD9g.0oyCn-dWDJ0cJvIeHux6iLYvgUztkQI
%d bloggers like this: