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Tag Archives | Common words

Assessing Closeness of Domain Name to Trademark

The UDRP analysis begins with assessing the closeness of the domain name to the trademark. Identical is letter by letter the same; similar is a string that can be confused with the trademark. A complainant has standing to maintain a proceding only if it can show that the  accused domain name raisees the probability of […]

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Defending Legitimate Interests: Common Words, Prejudice and Lapse of Time

We appear to have reached a stage on the Internet in which every dictionary word and many combinations have been spoken for as domain names. So much is this so that owners of newly minted trademarks composed of common words (who have not investigated domain name availability) find themselves having to buy the corresponding domain […]

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Date of First Use in Commerce in Application for Trademark Not Evidence

As a general rule, there can be no bad faith registration of a domain name registered prior to the existence of a trademark. For a complainant to prevail on the first requirement that it has a trademark right, the date of first use in commerce disclosed in the application must pre-date the registration of the […]

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Legitimacy and Good Faith Undermined by Knowledge of Complainant and its Trademark

Speculating, offering to sell and monetizing domain names composed or dictionary words and descriptive phrases without more are not actionable under the Policy even if respondent fails the right or legitimate interest test. The more is proof of intent at the time of registration to take advantage of complainant’s reputation in the marketplace. Bad faith […]

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Acquired Distinctiveness Through 5 or More Years of Use

Words and phrases in common use are attractive equally to purveyors and domainers. That one has a trademark does not disqualify the other from registering an identical or confusingly similar composition as long as proof fails to demonstrate bad faith. While registration confers distinctiveness, trademarks on the lower rung acquire this virtue over time. Trademarks […]

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When Inactivity Rises to the Level of Bad Faith

One of the central propositions of UDRP jurisprudence is that mere assertion of bad faith is insufficient for the complainant to establish infringement of its rights. This is so even if respondent lacks rights or legitimate interests in the domain name. The Panel in Murad, Inc. v. Stacy Brock, FA1202001430865 (Nat. Arb. Forum March 31, […]

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Concurrent Use of Names that Serve Equally as Domain Names and Trademarks

Trademark law recognizes (with some qualification) that two parties can be entitled to use similar, even identical lexical strings where the concurrent user offers the public unrelated goods or services. It has been noted that “the Lanham Act’s tolerance for similarity between competing marks varies inversely with the fame of the prior mark.” Kenneth Parker […]

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