The two bookends of speaking one’s mind are commentary and criticism, which is indisputably acceptable as protected speech, and (in order of abuse) tarnishment and disparagement. Defamation, which is a stage beyond disparagement, is not actionable under the UDRP, although tarnishment and disparagement may be. In ICANN’s lexicon, tarnishment is limited in meaning to “acts […]
Proof in a UDRP dispute is a step by step process; complainant builds its case in a logical progression: this is who I am (my trademark has priority in the market, where priority is measured from the date of domain name registration; or, as in some recent cases, from renewal of registration); this is who […]
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 […]
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) […]
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 […]
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 […]
For earlier Noteworthy Domain Decisions go to: April, May, & June 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 it registration or use of <austinpain.com> was not unlawful under the Act; […]
Complainants whose trademarks postdate domain name registrations continue to misunderstand the law as it applies to their rights under both the Uniform Domain Name Dispute Resolution Policy (UDRP) and the Anticybersquatting Consumer Protection Act (ACPA).While cyberspace has unlimited capacity (assuming availability of power) and plenty of room for everyone who wants to be there only […]
The Anticybersquatting Consumer Protection Act (ACPA) provides that “[a] person shall be liable in a civil action by an owner of a mark . . . if . . . the mark . . . is distinctive at the time of the registration of the domain name. . . .” This surely means that if […]
HomeAway, Inc. v. Timothy Hall (aka Tim Hall), D2015-0211 (WIPO April 21, 2015) Complainant’s allegation it is a licensee is insufficient evidence from which to “infer the existence of a license/authorization.” INVISTA North America S.a.r.l. v. Whois Privacy Service, FA1502001607177 (Nat. Arb. Forum April 14, 2015) While constructive notice is generally regarded as insufficient to […]
Over the years the UDRP has attracted a good amount of criticism hewing to one of two poles, accusing panelists of either cognitive impairment or bias. There are panelists’ (it is said) “who substitute their personal views for the agreed language of the UDRP.” Other critics complain that there is a “fundamental bias in the […]
Whether renewal of registration of domain names used in bad faith is actionable is an urgent question for complainants who either acquired their marks later than domain name registration; or if earlier are unable to prove respondents had any knowledge of their marks when the domain names were registered. Under UDRP jurisprudence the consensus view […]
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 […]
Occasionally, there is inadvertent lapse of both trademark registration and domain name. But, while falling out of the trademark registry for failure to file a section 8 affidavit may be embarrassing it is not fatal; losing a domain name for inadvertence may be fatal depending on the strength or weakness of the trademark. In the […]
