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Engaging in Extensive, Widespread Publicity of Website and Service Prior to Domain Name Registration

As a general rule, domain name registrations that precede trademark rights cannot have been in bad faith even though (and when) there is subsequent use in bad faith. However, where the complainant has extensively publicized its goods or services in the same jurisdiction in which the respondent resides and particularly if the respondent is a […]

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Equal Protection for Unregistered Trademarks, Common Law and Civil Law

Paragraph 4(a)(i) of the Policy is silent on whether the right the complainant is seeking to vindicate must be registered, but panelists quickly concluded that unregistered trademarks were equally protected. It was not necessary for a trademark to be registered by a governmental authority or agency for such rights to exist. The Policy “does not […]

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Choosing a Domain Name With a “.co” Extension that Has No Independent Presence on the Internet

The extension “.co” (country code for Columbia) is perfectly respectable although confusing with “.com” where the second level domain is identical to a trademark, there is no explanation for the registration and the respondent has no relationship with Columbia. It suggests a deliberate attempt to use “a particular ccTLD space” for illegitimate purposes, which in […]

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Proof of Common Law Right

The test for proving a common law right is demanding. It cannot be satisfied by asserting facts unaccompanied by evidence establishing their truth. The Overview of WIPO Panel Views on Selected UDRP questions at paragraph 1.7 states in relevant part The complainant must show that the name has become a distinctive identifier associated with the […]

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Complainant’s Duty to Inform Itself as a Defense to Reverse Domain Name Hijacking

The sole remedy for respondents hauled into a UDRP proceeding without cause is a finding of reverse domain name hijacking. The term “reverse domain name hijacking” is defined in Rule 1 as “using the Policy in bad faith to attempt to deprive a registered domain-name holder of a domain name.” The Rule is given substance […]

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Language of UDRP Proceedings

Rule 11(a) of the Rules of the Policy is a two clause provision. The first clause provides that “[u]nless otherwise agreed by the Parties, or specified otherwise in the Registration Agreement, the language of the administrative proceeding shall be the language of the Registration Agreement.” The second clause dilutes the imperative of the first by […]

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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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Jurisdictional Threshold

Ordinarily, “the content of a website (whether it is similar or different to the business of a trademark owner) is irrelevant in the finding of confusing similarity,” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 1.2; A&F Trademark, Inc. and Abercrombie & Fitch Stores, Inc v. Justin Jorgenson, D2001-0900 (WIPO September 19, […]

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The Principle that a Prior Registered Domain Name (In the Hands of the Original Registrant) Cannot Have been in Bad Faith Is Not Nullified by the Domain Name Being Passively Held

“When a domain name is registered before a trademark right is established, the registration of the domain name was not [indeed, could not have been] in bad faith because the registrant could not have contemplated the complainant’s non-existent right,” WIPO Overview of WIPO Panel Views on Selected UDRP Questions, paragraph 3.1. Only “when the respondent […]

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Proof of Actual Knowledge Required Where There is Plausible Denial

The greater the geographic distance between parties the more plausible the respondent’s denial that at the time it registered the domain name it had any knowledge of the complainant or its trademark. Plausibility is bolstered by the commonness of the words comprising the trademark and complainant’s failure to submit any evidence of its reputation in […]

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Proving Exception to the General Rule, Timing of Domain Name Registration

Where two parties in the same geographic area offer the same range of goods to the general public it might appear that in registering a domain name identical to the complainant’s trademark the Respondent had an impure motive. What if the domain name was registered before the complainant established its business? Although the respondent had […]

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Registering a Domain Name as a Dot “US” TLD

Holders of trademarks composed of given or surnames compete for space and attention with persons who are known by those names. On the silly side of the ledger are respondents who successfully claim to be known by their nicknames, such as “Penguin” and “Jollibee” who are found to have legitimate interests (if not rights) superior […]

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Broad Interpretation of the UDRP For Standing and What Constitutes Valuable Consideration

Standing to maintain a UDRP proceeding is not limited to persons actually having a trademark. It is “well-established” notes the Panel in The Old Course Limited v. Patrick Woods, D2010-0682 (WIPO June 6, 2010) that “a high profile announcement of a new corporate name can generate goodwill in that name … and [is] recognised as […]

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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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Taking Unfair Advantage of the Complainant’s Trademark

Ordinarily, a trademark must have been in existence before the registration of the domain name for a finding of bad faith registration, but this is not invariable and depends on factors other than timing. The issue is addressed in paragraph 3.1 of the WIPO Overview, which states: Consensus view: Normally speaking, when a domain name […]

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Targeting as an Essential Element of Proof for Trademarks Composed of Generic and Descriptive Terms

Having a registered trademark buys standing but it is not sufficient to win a domain name if its composition is on the weaker end of the classification scale.  The Panel noted in National Gardening Association, Inc. v. CK Ventures Inc., FA0911001294457 (Nat. Arb. Forum February 16, 2010) that “it seems probable that the USPTO only […]

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