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Archive | Internet Corporation of Assigned Names and Numbers

Multiple Related Complainants Each With Individually Vested Trademark Rights

ICANN’s Rules for the Uniform Domain Name Dispute Resolution Policy provide that “[a]ny person or entity may initiate a complaint” against a registrant who it accuses of registering a domain name identical or confusingly similar to a trademark in which it claims a right, Paragraph 3(a). WIPO’s Supplemental Rules state that “[a]ny term defined in […]

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What Is Meant By “Mandatory” in the Phrase “Submit to a Mandatory Proceeding”?

Paragraph 4 of the Policy describes the arbitral procedure as a “mandatory administrative proceeding.” This should not be misunderstood to mean that the respondent is compelled to appear. Indeed, statistically respondents default 85% of the time. The term “mandatory” is used in the sense that respondents are “obliged by virtue of the [registration] agreement to […]

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Having Trademark Rights, Not Failing to Assert Them Is the Threshold Issue

The respondent’s sole contribution under paragraph 4(a)(i) of the Policy should be to confute the complainant’s assertion of jurisdiction: that the complainant either has no trademark or if it does the domain name is neither identical or confusingly similar to it. The term “has rights” means that the complainant has them at the time of […]

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The Duty to Search for Potentially Conflicting Trademarks

A person is free to choose any string of phonetic elements or numbers as a domain name as long as its choice does not infringe the legal rights of any third party. In making its choice, the registrant represents and warrants as such in the registration agreement. The question, however, is, What duty does the […]

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UDRP’s Flexibility of Scope

Further on the subject of scope discussed in Yesterday’s Note. The UDRP appears clear in its scope, that it is intended “only for the relatively narrow class of cases of ‘abusive registrations’,” ICANN Second Staff Report, Paragraph 4.1(c), dated October 24, 1999, but in practice its boundary is less than sharp in delineating the included […]

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Inactivity of a Domain Name Registered Many Years Prior to Accrual of Trademark Is Not Grounds for Finding Registration in Bad Faith

It is undoubtedly true that a respondent who holds inactive for many years a domain name identical to a trademark and is unresponsive to a Rule 12 Procedural Order to dislcose its use will fall short of rebutting a complainant’s allegation that it lacks rights or legitimate interests in the disputed domain name. However, a […]

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Accrual of Trademark Rights: Principal and Supplemental Registers

UDRP is not centric to any particular national law, but where the parties are “domiciled in the United States and United States courts have recent experience with similar disputes … the Sole Panelist shall look to rules and principles of law set out in decisions of the courts of the United States,” EAuto, L.L.C. v. […]

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Application for Trademark Registration By Itself Does Not Qualify as a Right

A certificate of registration satisfies the threshold requirement for maintaining a UDRP proceeding while a mere “intent to use” application to register a trademark or registration on the Supplemental Register does not. The consensus is that no “presumption [of validity] arises from a pending application to register a mark,” Aspen Grove, Inc. v. Aspen Grove, […]

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The Work of Early Panels in Establishing the UDRP Jurisprudence

The first five UDRP decisions (1 commenced in1999 and the first four of 2000) were decided in Complainants’ favor without Respondents’ participation. Default gives the complainant an advantage, but only to the extent that the Panel is working with a one-sided record. Otherwise, the burden of proof remains with the complainant on all elements of […]

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Good Faith Registration Overrides Lack of Rights or Legitimate Interests and Bad Faith Use

It is seen as a deficiency by some that a complainant is remediless under the UDRP for blatant bad faith use of a domain name registered in good faith. There have been a number of interpretative suggestions to rationalize a construction of the Policy to circumvent the paragraph 4(a)(ii) requirement for bad faith in the […]

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Establishing Credibility as an Element of Persuasion

A credible witness has a better chance of persuading the Panel than one who fails to present his case properly. “It is possible,” states the Panel in Maurice Sporting Goods, Inc. v. American Sportcase, LLC, D2010-0689 (WIPO June 29, 2010) “to theorize a different story” but the story presented is “supported by some circumstantial evidence […]

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Pretending Association with Trademark Holder to Draw Traffic

ICANN’s decision to approve the .xxx suffix for websites with pornographic content is essentially a zoning resolution. It has the same intention, namely to confine adult content to its own district to prevent its contaminating better neighborhoods. Offering pornography is not condemned under the Policy. “The mere fact that a domain name resolves to a […]

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Challenging a UDRP Order Denying Complaint or Granting Cancellation or Transfer

There is no provision under the UDRP for an administrative appeal from an adverse order granting or denying the complaint. Rather, the loser’s recourse is to commence a de novo law suit under the national law of its jurisdiction, which in the case of the United States would be a claim under the Anticybersquatting Consumer […]

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Respondent’s Exposure to Future Claim Following Exoneration of Abusive Registration

There is a notion that a respondent adjudicated as having a legitimate interest in a disputed domain name can be exposed in the future if it changes its content to take advantage of the complainant’s trademark. There is disagreement on the issue (the Octogen line of cases and variants of that thinking), but the consensus […]

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Suspending or Terminating a UDRP Proceeding

Paragraph 18(a) of the Rules of the Policy authorizes the Panel in its discretion to suspend or terminate a UDRP proceeding “[i]n the event of any legal proceedings initiated prior to or during an administrative proceeding in respect of a domain name dispute . . . or to proceed to a decision” (emphasis added). The […]

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Dialogue and Debate in the Development of UDRP Jurisprudence

UDRP jurisprudence did not come ready made. Panelists assembled it from readily available legal and cultural artifacts, and it grew (among other ways) through the friction of dialogue and debate. An example of this has been observed in earlier Notes discussing the Octogen line of cases advocating “retrospective bad faith.”  The dialogue or debate has […]

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Authority for Mandatory Arbitration of Domain Name Disputes

The domain community is well aware of the UDRP, but other registrants are less familiar with the contractual matrix that binds them to a mandatory arbitration. At the request of the Provider upon receiving a complaint the Registrar is required to confirm the following basic information: “the domain name is registered with it; the Respondent […]

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Registrant’s Assent to Maintain Accurate Information in the WHOIS Database

When challenged for abusive registration respondents’ privacy veils are lifted for the duration of the UDRP proceedings and the WHOIS database will so reflect. Proxies if they are truly the registered owners of record and not another name for a privacy service are a different matter. Beneficial owners can remain anonymous, in which event the […]

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Mandatory Proceeding to Resolve a Claim of Abusive Registration

It is useful to pause in dissecting cases and addressing evidentiary issues to outline for those unfamiliar with the UDRP the mechanism that compels a respondent to answer for its choice of domain name. The authority for hauling a domain name registrant into a UDRP proceeding in response to a trademark holder’s complaint that the […]

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Inferring from Circumstantial Evidence

Rule 14(b) of the Policy provides that if a party does not answer the complaint or comply with any request from the Panel “the Panel shall draw such inferences … as it considers appropriate.” The Panel’s decision in MBS Consulting SPA v. mbsconsul inc. / web master, D2009-1505 (WIPO December 23, 2009) illustrates what is […]

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