What to one panelist is clearly bad faith conduct in filing a UDRP complaint, to another is excusable for lack of proof. The disagreement over reverse domain name hijacking centers on the kind of evidence necessary to justify it and the nature of the burden. RDNH is defined as “using the UDRP in bad faith […]
The Rise of Cyber-Entrepreneurs Trademarks have a long history; domain names are of recent origin. Trademarks were “invented” to “identify and distinguish [one person’s] goods . . . from those manufactured or sold by others and to indicate the source of the goods. Domain names are merely function elements “invented” to identify and link locations […]
As I pointed out in last week’s essay, having trademark rights that come into existence later than registrations of corresponding domain names only gets complainants to first base; they have standing but no actionable claim. I also noted a nuance (not a difference in substance) in standing requirements between the UDRP and the ACPA. However, […]
At the top of WIPO’s list of the most cybersquatted trademarks for 2015 (issued on March 18, 2016) is “Hugo Boss” with 62 complaints. The report also reveals that the fashion industry led other commercial sectors with 10% of complainant activity. Not surprisingly, in this sector companies (couturiers extending their services to the general public) […]
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 […]
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 […]
“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 […]
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 […]
The question of protected speech is whether the protection is to the domain name or the contents of the website. There are two official “views” about critical speech. Both recognize (at least, generally) that use is “fair” if it is foretold or announced in the domain name and expressed in the content. Thus, “trademark+pejorative.com” that […]
Panels in formative cases held there was “no room for general equitable doctrines under the Policy such as would be possessed by Courts in common law jurisdictions.” Edmunds.com, Inc. v. Ult. Search Inc., D2001-1319 (WIPO February 1, 2002). This is consistent with the recommendation in the WIPO Final Report that “a time bar to the bringing […]
Rule 17 of the Rules of the Policy provides instructions for terminating a proceeding after the file has been submitted to the Panel. Subparagraph (a) states that “[i]f, before the Panel’s decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding.” Subparagraph (b) contemplates the happening of an intervening contingency that […]
The “use of a privacy or proxy registration service is not in and of itself an indication of bad faith … [but] the manner in which such service is used can in certain circumstances constitute a factor indicating bad faith.” WIPO Overview 2.0 paragraph 3.9. The second sentence has in mind registrar’s failure after it […]
Unless personal names have achieved trademark status they are not protected under the UDRP and there can be no injunctive relief against domain name registrants. It may be abusive but it is not actionable. Report of the Second WIPO Internet Domain Name Process, The Recognition of Rights and the Use of Names In the Internet […]
Panels are typically faced with a cascade of options in resolving UDRP disputes. Complainants do not necessarily prevail for proving trademark rights and respondents do not lose for failing to appear and defend themselves. First for some perspective. WIPO prepared an informative overview of the UDRP and its role in a paper dated August 2011 […]
Unless personal names have achieved trademark status, they are not protected under the UDRP. Excluded are living persons whose reputations are earned out of the spotlight of commerce even though active in the figurative scrum of their businesses or professions. This rule applies however extraordinary the individual’s contribution is to business, science, politics, the professions […]
Panels have long put to rest the argument that re-registration (or renewal of) is equivalent to registration, although there continue to be panelists holding that view. It is illustrated in Eastman Sporto Group LLC v. Jim and Kenny, D2009-1688 (WIPO March 1, 2010) (“Based upon the record in this proceeding… [the] Panel deems Respondent’s 2009 […]
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 […]
Of all the WIPO Views on Selected UDRP Questions, two stand out for Panels being in disagreement. Criticism sites (paragraph 2.4) and Fan sites (paragraph 2.5). For answers to all the other questions there is consensus. The two questions are as follows: 2.4 Can a criticism site generate rights or legitimate interests in the disputed […]
Expressing one’s thoughts in a domain name identical or confusingly similar to a trademark is protected speech even if it offends and enrages the complainant. The Policy enshrines the right to speak critically. There has, however, been a mixed reception for domain names identical to the trademark. In Aspis Liv Försäkrings AB v. Neon Network, […]
Relief under the UDRP is not closed to unregistered trademark holders – they too are covered – but the burden to establish that right is significantly greater than for those with certificates. There is also a wide difference within the unregistered trademark ranks as to the evidence necessary to demonstrate the existence of the right. […]
