Thematic Index to Comments on Cases //// Index of Daily Notes DOMAIN NAME JURISPRUDENCE &
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COMMENTARIES ON UDRP CASES
Thematic Index to Comments on Cases //// Index of Daily Notes
Comments Keyed to Policy and Rule Provisions |
LexisNexis Trademark Blog Posts
5/2/08 Bad Faith Requirements Under Two ADRs: UDRP and ukDRS[¶4(a)(iii) of the Policy]
5/7/08 Personal Names, Protected as a Trademark When the Name is a Source Indicator for Goods and Services [¶4(a)(i) of the Policy]
5/9/08 The Role of Credibility in a UDRP Proceeding UDRP [Rule 15(a) of the Rules of the UDRP]
5/13/08 Demonstrable Preparations: Respondent’s Burden under Paragraph 4(c)(i) of the Policy [¶4(c)(i) of the Policy]
5/20/08 Common Law Marks, Recognition in the Marketplace and Proof of Secondary Meaning [¶4(a)(i) of the Policy]
5/27/08 “Punting” or “Admirable Restraint”, Subject Matter Jurisdiction and Scope of the Policy [¶4(a)(i) of the Policy]
6/2/08 Pairs: Similar Facts, Different Results [¶4(a)(iii) of the Policy]
6/4/08 Registrar Violations of Contractual Obligations [ICANN, Generally]
6/9/08 Right of Trademark Owner to Recapture Domain Name after Inadvertent Lapse of Registration [¶4(b)(ii) of the Policy]
6/13/08 Transferee’s Right (Or Not) To a Disputed Domain Name [¶4(b)(iv) of the Policy]
6/18/08 Respondent’s Right to a Domain Name In Which It Also Has a Trademark Right [¶4(c)(i) of the Policy]
6/24/08 Plenary Adjudication After An Adverse Decision [¶4(k) of the Policy]
7/2/08 The Consequence of Disclaiming Design or Design-Plus-Word Trademarks [¶4(a)(i) of the Policy]
7/7/08 Disputes Outside the Scope of the Policy [UDRP, Procedure]
7/10/08 Application of Res Judicata in Refiling a Complaint [UDRP, Procedure]
7/15/08 Parking for Revenue [¶4(b)(iv) of the Policy]
7/18/08 Choice of Law When Parties Are Residents of Different Countries [Rule 15(a) of the Rules of the Policy]
7/22/08 To What Standard of Diligence Should High Volume Registrants Be Held? [¶2 of the Policy]
7/25/08 Respecting the Record – Construing Rule 12 of the Policy [Rule 12 of the Rules of the Policy]
8/6/08 Unilateral Consent to Transfer Respondent's Motivation; [Rule 17(a) of the Rules of the Policy]
8/28/08 Uncertainty in Protecting Two and Three Letter Trademarks [¶2 of the Policy]
9/5/08 Penalizing the Complainant for Abusing the UDRP Procedure [Rule 15(e) of the Rules of the Policy]
9/10/08 Shutting Down Criticism or Protecting from Impersonation? [¶4(c)(iii) of the Policy]
10/3/08 Distinguishing Among Theories [¶4(b)(i -iv) of the Policy]
10/26/08 Granting, Authorizing or Acquiescing in Another’s Use of a Trademark [¶4(c)(i) of the Policy]
Daily Notes by Subject
| ICANN, Contract Obligations and Enforcement |
Predictability and Consistency [In Preparation] Registrar Violations of Contractual Obligations © June 4, 2008 (LexisNexis Trademark Blog) UDRP, Not an Exclusive Remedy © 2007-2008 What is the Uniform Domain Name Resolution Policy and What is its Provenance? © 2007-2008 |
| UDRP, Procedure |
Disputes Outside the Scope of the Policy © July 7, 2008 (LexisNexis Trademark Blog) |
Paragraph 2 of the Policy “Your Representations. By applying to register a domain name, or by asking us to maintain or renew a domain name registration, you hereby represent and warrant to us that (a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the domain name in violation of any applicable laws or regulations. It is your responsibility to determine whether your domain name registration infringes or violates someone else's rights.” |
Should High Volume Registrants Be Held to a Higher Standard of Dilignce? © July 22, 2008 (LexisNexis Trademark Blog) |
Paragraph 4(a)(i) of the Policy “[Respondent’s] domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights.” |
| Basic Rules for Claiming and Defending Disputed Domain Names © 2007-2008 Common Law Marks, Recognition in the Marketplace and Proof of Secondary Meaning © May 20, 2008 The Consequence of Disclaiming Words in Design or Design-Plus-Word Trademarks © July 2, 2008 (LexisNexis Trademark Blog) Factual Circumstances Favoring Respondent © 2007-2008 Invoking Jurisdiction © 2007-2008 Personal Names, Protected as a Trademark When the Name is an Indicator for Goods and Services © May 7, 2008 (LexisNexis Trademark Blog) “Punting” or “Admirable Restraint”, Subject Matter Jurisdiction and Scope of the Policy © May 27, 2008 (LexisNexis Trademark Blog) |
| Paragraph 4(a)(ii) of the Policy “[Respondent has] no rights or legitimate interests in the domain name.” |
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| Paragraph 4(a)(iii) of the Policy “[The] domain name has been registered and is being used in bad faith.” |
Bad Faith Requirements Under Two ADRs; UDRP and ukDRS © May 2, 2008 (LexisNexis Trademark Blog) |
Paragraph 4(b) of the Policy “For the purposes of Paragraph 4(a)(iii), the following circumstances, in particular but without limitation, if found by the Panel to be present, shall be evidence of the registration and use of a domain name in bad faith...” |
| Abusive Registration Can Encompass Conduct That is Deemed Abusive © 2007-2008 Defining Predatory and Parasitical Practices, Basic Rules © 2007-2008 |
Paragraph 4(b)(i) of the Policy “[C]ircumstances indicating that you have registered or you have acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of your documented out-of-pocket costs directly related to the domain name.” |
Paragraph 4(b)(ii) of the Policy “[Y]ou have registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that you have engaged in a pattern of such conduct.” |
Lapse of Registration: Right of Trademark Owner to Recapture Domain Name after Inadvertent © June 9, 2008 (LexisNexis Trademark Blog) |
Paragraph 4(b)(iii) of the Policy “[Y]ou have registered the domain name primarily for the purpose of disrupting the business of a competitor.” |
Distinguishing Among Theories © August 22, 2008 (LexisNexis Trademark Blog) |
Paragraph 4(b)(iv) of the Policy “[B]y using the domain name, you have intentionally attempted to attract, for commercial gain, Internet users to your web site or other on-line location, by creating a likelihood of confusion with the Complainant's mark as to the source, sponsorship, affiliation, or endorsement of your web site or location or of a product or service on your web site or location.” |
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Paragraph 4(c) of the Policy “How to Demonstrate Your Rights to and Legitimate Interests in the Domain Name in Responding to a Complaint. When you receive a complaint, you should refer to Paragraph 5 of the Rules of Procedure in determining how your response should be prepared. Any of the following circumstances [that is, the circumstances set forth in 4(c)(i-iii)], in particular but without limitation, if found by the Panel to be proved based on its evaluation of all evidence presented, shall demonstrate your rights or legitimate interests to the domain name for purposes of Paragraph 4(a)(ii):” |
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Paragraph 4(c)(i) of the Policy “[B]efore any notice to you of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.” |
Should High Volume Registrants be Held to a Higher Standard? © July 22, 2007 (LexisNexis Trademark Blog) Demonstrable Preparations to Use, Respondent's Burden © May 13, 2008 Parking for Revenue© [also at 4(b)(iv)] July 15, 2008 Respondent’s Rights to a Domain Name which it has also Registered as a Trademark © June 19, 2008 (LexisNexis Trademark Blog) |
| Paragraph 4(c)(ii) of the Policy “[Y]ou (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights.” |
| Paragraph 4(c)(iii) of the Policy “[Y]ou are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.” |
| What it Means to Tarnish a Trademark © August 29, 2008 |
| Paragraph 4(k) of the Policy, First Sentence “[T]he “mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from submitting the dispute to a court of competent jurisdiction for independent resolution before such mandatory administrative proceeding is commenced or after such proceeding is concluded.... ” |
| Plenary Adjudication After An Adverse Decision © June 24, 2008 (LexisNexis Trademark Blog) |
Paragraph 4(k) of the Policy, Continued Second Sentence "***If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel's decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. |
| Rule 3(a) of the Rules of the Policy “Any person or entity may initiate an administrative proceeding by submitting a complaint in accordance with the Policy and these Rules to any Provider approved by ICANN.” |
| Application of Res Judicata in Refiling Complaint © July 10, 2008 (LexisNexis Trademark Blog) |
Rule 5(e) of the Rules of the Policy “If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based upon the complaint.” |
Failure to Submit a Response © 2007 |
Rule 10(d) of the Rules of the Policy “The Panel shall determine the admissibility, relevance, materiality and weight of the evidence.” |
A Question of Plausibility © 2007 |
| Rule 12 of the Rules of the Policy “[i]n addition to the complaint and the response, the Panel may request, in its sole discretion, further statements or documents from either of the Parties.” |
| Respecting the Record – Construing Rule 12 of the Policy © July 25, 2008 (LexisNexis Trademark Blog) |
Rule 14(b) of the Rules of the Policy “If a Party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, these Rules or any request from the Panel, the Panel shall draw such inferences therefrom as it considers appropriate.” |
Rule 15(a) of the Rules of the Policy “A Panel shall decide a complaint on the basis of the statements and documents submitted and in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable.” |
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Rule 15(e) of the Rules of the Policy “[I]f after considering the submissions the Panel finds that the complaint was brought in bad faith, for example in an attempt at Reverse Domain Name Hijacking or was brought primarily to harass the domain-name holder, the Panel shall declare in its decision that the complaint was brought in bad faith and constitutes an abuse of the administrative proceeding.” |
Penalizing the Complainant for Abusing the UDRP Procedure © August 8, 2008 (LexisNexis Trademark Blog) |
Rule 17(a) of the Rules of the Policy “If, before the Panel's decision, the Parties agree on a settlement, the Panel shall terminate the administrative proceeding.” |
Unilateral Consent to Transfer Respondent's Motivation © August 1, 2008 (LexisNexis Trademark Blog) |
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Para 4(k) of the Policy, Continued "***If an Administrative Panel decides that your domain name registration should be canceled or transferred, we will wait ten (10) business days (as observed in the location of our principal office) after we are informed by the applicable Provider of the Administrative Panel's decision before implementing that decision. We will then implement the decision unless we have received from you during that ten (10) business day period official documentation (such as a copy of a complaint, file-stamped by the clerk of the court) that you have commenced a lawsuit against the complainant in a jurisdiction to which the complainant has submitted under Paragraph 3(b)(xiii) of the Rules of Procedure. |
A Question of Plausibility © 2007 |