Author Archives: Gmlevine

About Gmlevine

Attorney New York, Commercial litigation, publishing and Internet law,

Trademarks Composed of Elements that Include Dictionary Words

Posted on May 17, 2013 by Gmlevine

Trademarks gather strength as they ascend the classification scale. In order, fanciful, arbitrary and suggestive are at the strong end of the scale, while descriptive and generic (if they qualify for registration) are on the weak end. The registry of trademarks includes numerous well-known dictionary words used fancifully or arbitrarily – think fruit: “apple”, “blackberry” and “orange”; or common words combined such as “micro” and “soft” and “America” and “Online.” More common words used descriptively have qualified when by their presence in the marketplace they have achieved secondary meaning. Whether domain name registrants are cybersquatting on the trademark depends on a number of factors that are discussed in Imagine Solutions, Inc. v. Encapture.com, Privacy Services / Ravindra Kumar Lahoti, … Read the rest

Posted in Acttive / passive use, Complainant "in mind", Generic/Descriptive terms, Opportunism, Para. 4(a)(ii) of the Policy, Para. 4(b)(iv) of the Policy, Paragraph 4(b) of the Policy, Secondary meaning, Targeting, Timing of registration, Totality of facts, UDRP Rule 15(a), Website content | Tagged , , , , , , | Leave a comment

Similarity of Domain Name to Trademark Is Only the Beginning of the Assessment

Posted on May 2, 2013 by Gmlevine

UDRP provides remedies on proof of abusive registration of domain names. What constitutes abuse sufficient to support a remedy is something more than having a trademark that another party is using as a domain name. Initiating a proceeding on a non-actionable claim is an abuse of the Policy. What if the complainant initially believed it had a meritorious claim, and then learned from respondent’s submission that respondent had a right or legitimate interest in the domain name? This factual situation occurred in Avaya Inc. v. Avayo Electronics, FA1302001487607 (Nat. Arb. Forum April 19, 2013) where the 3-Member Panel came up with a surprising answer that (to my knowledge) has not previously been offered and which I think marks an … Read the rest

Posted in Certification, Concurrent rights, Confusing similarity, Knowledge, Likelihood of confusion, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, Similar - Not confusing, Targeting / Not targeting | Tagged , , , , , , | Leave a comment

Inadvertent Lapse of Both Trademark Registration and Domain Name

Posted on April 22, 2013 by Gmlevine

Falling out of the trademark registry for failure to file a section 8 affidavit may be embarrassing but not fatal; losing a domain name for inadvertence may be fatal depending on the strength or weakness of the trademark. In the canon of defenses, however, lapse does not prejudice a complainant’s standing to challenge a domain name holder. In Department of General Services, State of Maryland v. Domain Privacy Group, FA130300 1488524 (Nat. Arb. Forum April 2, 2013) Complainant’s trademark EMARYLAND MARKETPLACE was cancelled on October 5, 2012: the cause, “changeover in State personnel.” The Maryland Department of General Services re-applied for the trademark on February 13, 2013. Respondent jumped on the expired domain name immediately upon lapse.

In response … Read the rest

Posted in Abusive intent, bad faith use, Common law protection, Complainant "in mind", Cybersquatting, Inadvertent lapse of renewal, Para. 4(b)(iv) of the Policy, Renewal / Re-registration, Targeting, UDRP, Website content | Tagged , , | Leave a comment

Insufficient Evidence for Respondent’s Lack of Rights or Legitimate Interests – Not Even the Iconic Trademark Owner Is Excused From Having to Offer Proof

Posted on April 10, 2013 by Gmlevine

Just as complainants cannot prevail on the strength of their trademarks which only proves the first requirement that it has standing to maintain the proceedings, so respondents do not forfeit their domain names on default of responding to the complaint. This message continues to be lost even to the most prestigious law firms and the wisest counselors. If nothing but suppositional allegations are offered as proof for paragraphs 4(a)(ii) or 4(a)(iii) relief will be denied. Should that verdict be applied to iconic trademarks such as AOL, as it was in AOL, Inc. v. ChengshuangLi, FA1302001483339 (Nat. Arb. Forum March 26, 2013)? The Panel made the following pronouncement: the “Complainant’s entire argument” on the issue of rights or legitimate interests … Read the rest

Posted in Abusive intent, Burden of proof, Burden of proof / persuasion, Cybersquatting / Not cybersquatting, Default, Insufficiency of evidence, Intent / Tartgeting, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Reputation in the marketplace, UDRP Rule 10(d) (evidence) | Tagged , | Leave a comment

Protecting Corresponding Domain Names to Trademarks When ICANN Expands Space for new gTLDs

Posted on April 1, 2013 by Gmlevine

ICANN has recently approved several rights protection mechanisms to counter cybersquatting for new gTLDs, including the Trademark Clearing House program (TMCH) which allows brand owners to submit their trademark details for entry into a centralized database and enable the rights holder, after verification, to participate in the sunrise program and Trademark Claims service across all eligible new gTLDs. The TMCH is described in a circular dated January 11, 2012. Sunrise rights refer to a stipulated period during which an owner of a registered trademark may register domain names in new generic Top Level Domains (gTLDs) prior to the registrar accepting registrations from the general public. Not all owners or trademark counsel are acquainted with the procedure to protect the … Read the rest

Posted in Inadvertent lapse of renewal, Sunrise, UDRP | Tagged , , , , | Leave a comment