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 […]
Archive | World Intellectual Property Organization
Earlier Registered Domain Names, Later Acquired Trademarks
By Gerald M. Levine on May 18, 2016 in Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, Protecting rights, Trademarks, Trademarks and domain names, udrp law, World Intellectual Property Organization
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 […]
Trademark Owners’ Rights to Corresponding Earlier Registered Domain Names
By Gerald M. Levine on April 25, 2016 in cybersquatting law, Domain name law, Trademarks, udrp law, udrp proceedings, World Intellectual Property Organization
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, […]
Registering and Monetizing Personal Names
By Gerald M. Levine on March 21, 2016 in Abusive registration, Common law trademarks, Cybersquatting, cybersquatting law, Domain name law, Trademarks, udrp proceedings, World Intellectual Property Organization
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) […]
Defense of Free Speech Under UDRP Depends On the Panel You Draw
By Gerald M. Levine on November 25, 2014 in Cybersquatting, cybersquatting law, Domain name law, udrp proceedings, Uniform Domain Name Resolution Policy, World Intellectual Property Organization
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 […]
Opportunistic Registrations of Domain Names
By Gerald M. Levine on September 26, 2014 in Abusive registration, Anticybersquatting Consumer Protection Act, Cybersquatting, cybersquatting law, Internet Corporation of Assigned Names and Numbers, UDRP Commentaries, udrp law, udrp proceedings, Uniform Domain Name Resolution Policy, World Intellectual Property Organization
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 […]
Publication of Domain Name Arbitration
By Gerald M. Levine on February 10, 2014 in Abusive registration, Anticybersquatting Consumer Protection Act, Cybersquatting, Domain name law, Internet Corporation of Assigned Names and Numbers, Typosquatting, UDRP Commentaries, Uniform Domain Name Resolution Policy, World Intellectual Property Organization
“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 […]
Combining Second Level Domain and Top Level Suffix
By Gerald M. Levine on December 31, 2013 in Internet Corporation of Assigned Names and Numbers, UDRP Commentaries, World Intellectual Property Organization
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 […]
Limits of Protected Speech
By Gerald M. Levine on October 7, 2013 in Abusive registration, Contracts, Cybersquatting, UDRP Commentaries, World Intellectual Property Organization
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 […]
Applying Laches as an Affirmative Defense in UDRP Disputes
By Gerald M. Levine on January 26, 2013 in Abusive registration, Uniform Domain Name Resolution Policy, World Intellectual Property Organization
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 […]
Consequences of Withdrawing UDRP Complaint
By Gerald M. Levine on April 5, 2012 in Abusive registration, Uniform Domain Name Resolution Policy, World Intellectual Property Organization
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 […]
Non Disclosure of Beneficial Owner of Domain Name as a Factor Pointing to Bad Faith Registration and Use
By Gerald M. Levine on March 30, 2012 in Abusive registration, Uniform Domain Name Resolution Policy, World Intellectual Property Organization
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 […]
Injunctive Relief Against Domain Name Registrants for Unauthorized Registration of Personal Name
By Gerald M. Levine on January 12, 2012 in Abusive registration, Anticybersquatting Consumer Protection Act, cybersquatting law, udrp law, udrp proceedings, Uniform Domain Name Resolution Policy, World Intellectual Property Organization
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 […]
Chances of Winning and Losing Domain Name Disputes
By Gerald M. Levine on December 20, 2011 in Abusive registration, Uniform Domain Name Resolution Policy, World Intellectual Property Organization
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 […]
The Fate of Business Luminaries in Protecting Their Names
By Gerald M. Levine on November 1, 2011 in Uniform Domain Name Resolution Policy, World Intellectual Property Organization
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 […]
Registration and Re-Registration: Measuring Bad Faith
By Gerald M. Levine on September 28, 2011 in Uniform Domain Name Resolution Policy, World Intellectual Property Organization
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 […]
Deliberative Conversations and the Making of Domain Name Jurisprudence
By Gerald M. Levine on August 31, 2011 in Abusive registration, Anticybersquatting Consumer Protection Act, Internet Corporation of Assigned Names and Numbers, Uniform Domain Name Resolution Policy, World Intellectual Property Organization
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 […]
Registering Fan Club Domain Names: Ambivalence to Unfavorable
By Gerald M. Levine on August 16, 2011 in Abusive registration, Uniform Domain Name Resolution Policy, World Intellectual Property Organization
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 […]
Comments and Commentary: Protected Noncommercial Fair Use
By Gerald M. Levine on August 12, 2011 in Uniform Domain Name Resolution Policy, World Intellectual Property Organization
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, […]
Proving a Common Law (Unregistered) Trademark
By Gerald M. Levine on July 29, 2011 in Abusive registration, Anticybersquatting Consumer Protection Act, Uniform Domain Name Resolution Policy, World Intellectual Property Organization
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. […]