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Noteworthy UDRP Decisions April 2015

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 support a finding of bad faith, the Panel here concludes that Respondent had actual notice of Complainant’s mark because of its fame which has been established by the evidence and the absence of any known meaning of TERATE other than as an identifier of Complainant’s products and that Respondent thus registered the disputed domain name in bad faith under Policy ¶ 4(a)(iii).

Daredevil Brewing Company LLC v. Matthew O’Brien, FA150300 1608504 (Nat. Arb. Forum April 23 2015).
Renewal of registration of domain name registered prior to complainant’s trademark right does not reset priority and “cannot justify the inference of Respondent’s bad faith registration unless it is coupled with other circumstances.” Complainant’s predecessor owned a registered international and U.S. mark in DAREDEVIL CROSSING that it claimed gave it priority as a family mark but the mark was cancelled on October 4, 2013 due to the failure of filing an acceptable declaration of use of the mark: “However, the Panel is of the view that the filing date or the priority date of a family mark cannot be the priority date of the Complainant’s DAREDEVIL BREWING CO mark with the USPTO.”

Aspect Capital Limited v. Fluder (aka Pierre Fluder), D2015-0475 (WIPO April 14, 2015); Riverbed Technology, Inc. v. Nicholas Bonner, FA1503001608365 (Nat. Arb. Forum April 17, 2015).
In determining whether a domain name is identical or confusingly similar to trademark the dot can be ignored. In Aspect, Respondent coupled “aspect” with the new TLD “capital” to form <aspect.capital>. In Riverbed, Respondent coupled “riverbed” with the new TLD “technology” to form <riverbed.technology>.

Chiu Tsen Hu v. Andy Rose, HK-1500719 (ADNDRC April 16, 2015), citing several other cases from ADNDRC including Dracco Company Ltd. v. NJ T Ech Solutions Inc., HK-1400577 (ADNDRC April 14, 2014).
Panelists have not hesitated to condemn fraudulent transfers and return domain names to complainants on the theory of abusive registration. “Abusive registration” is the highest level of actionable conduct; it subsumes cybersquatting.

Domain Name Vault LLC v. John C. Bush and EClinical Works LLC, 14-cv-2621 (District of Colorado April 15, 2015).
Trademark owner’s submission to choice of court under the “mutual jurisdiction” provision does not extend to submission of personal jurisdiction of its attorney who represented it in the UDRP proceeding.

iSystems v. Spark Network, 3:08-CV-1175-N (N.D. TX, Dallas Div. Sept. 19, 2014).
In a declaratory judgment action under the ACPA the court is not deciding whether the domain name infringes defendant’s trademark, but whether defendant materially misrepresented “that a domain name is identical to, confusingly similar to or dilutive of a mark. The “NAF arbitration award was not based on any misrepresentation that the JDate Domain was dilutive of the JDATE Mark, but rather on the true representation that the JDate Domain was identical to, or confusingly similar to, the JDATE Mark.” Paragraph 10 Conclusions of Law).

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