Author Archives: Gmlevine

About Gmlevine

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

Unauthorized But Legally Permissive Use of Trademark

Posted on February 22, 2012 by Gmlevine

A respondent acquires no right or legitimate interest in a domain name that incorporates a trademark by registering or renewing it. Nokia Corporation v. Nokia Ringtones & Logos Hotline, D2001-1101 (WIPO October 18, 2001) (, “[Respondents] only have a right to the domain name … if Complainant had specifically granted that right.” Respondents succeed, however, where the trademark compositions they use – in noun (, ) or adjectival phrases () – truthfully convey what the names promise. A respondent’s choice of a domain name incorporating a trademark for the purpose of identifying its business rather than competing with the owner does not require the owner’s authorization. Adaptive Molecular Technologies, Inc. v. Woodward, D2000-0006 (February 28, 2000); Giddings & … Read the rest

Posted in Nominative fair use, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, Para. 4(c)(iii) of the Policy, Paragraph 3(c) of the Policy, Permissive use, Reseller / Distributor, Shared interest in trademark, Unauthorized use | Tagged , , | Leave a comment

Assessing Evidence for Right or Legitimate Interest

Posted on February 15, 2012 by Gmlevine

Assigning burdens in a UDRP proceeding is well established. For all paragraph 4(c) defenses respondent’s proof must establish “past” and “present” as opposed to “future” use of the disputed domain name. Thus, for paragraph 4(c)(i) respondent must demonstrate its “[present and past] use of” or “demonstrable [present] preparations to use” the domain name constitutes a right or legitimate interest; for paragraph 4(c)(ii) the respondent must demonstrate that it is “commonly known” by the domain name from a point in time that precedes its registration; and in paragraph 4(c)(iii) the proof is the manner in which the domain name is being used “now.” Intended future use unaccompanied by evidence of present use is not a good defense under either 4(c)(i) or … Read the rest

Posted in Abusive intent, Burden of proof / persuasion, Legitimate use, Paragraph 4(b) of the Policy, Paragraph 4(c) of the Policy, Prima facie case, Shifting burden of proof, Targeting / Not targeting | Tagged , | Leave a comment

Multiple Users of Term Other than Trademark Owner

Posted on February 8, 2012 by Gmlevine

There have been a number of recent UDRP cases in which complainants’ trademarks are composed of letters or words that have currency for other users in the marketplace. Two, three and four letter strings, for example, are valuable names that could also be acronyms. Examples: <rmhp.com> and <tds.com>. The Panel in Rocky Mountain Health Maintenance Organization, Incorporated v. Domain Administrator / PortMedia, FA1112001418881 (Nat. Arb. Forum January 27, 2012) noted that the domain name was not exactly an acronym. The Respondent in Telephone and Data Systems, Inc. v. Protected Domain Services – Customer ID: NCR-813584 / Daniel Wang, D2011-0435 (WIPO May 10, 2011) pointed out that there are “numerous other United States trademark registrations for TDS for a … Read the rest

Posted in Common expressions, Complainant "in mind", Complex facts / Not cybersquattting, Innocent registration, Insufficiency of evidence, Para. 4(a)(i) of the Policy, Para. 4(b)(iv) of the Policy, Para. 4(c)(i) of the Policy, Targeting / Not targeting, Trademark in mind, UDRP Rule 10(d) (evidence), Unregistered trademark | Tagged , , , , | Leave a comment

Credibility and Reverse Domain Name Hijacking

Posted on February 1, 2012 by Gmlevine

The complainant certifies in commencing the UDRP proceeding,“that the information contained in th[e] Complaint is to the best of [its] knowledge complete and accurate [and] that th[e] Complaint is not being presented for any improper purpose, such as to harass [the respondent].” Paragraph 3(b)(xiv) of the Rules of the Policy. Respondent has the burden of proving that the “Complaint is … being presented for any improper purpose.” It has to establish the improper purpose affirmatively rather than negatively, that is it requires proof of an intentional act or conduct so lacking in circumspection and discretion that no other inference can be drawn except that complainant intended “to deprive a registered domain-name holder of a domain name.” However, “mere lack of … Read the rest

Posted in Abusive intent, Commercial gain, Credibility, Knowledge, Para. 4(a)(iii) of the Policy, Para. 4(b)(i) of the Policy, Para. 4(b)(iv) of the Policy, Reverse domain name hijacking | Tagged , , | Leave a comment

Parties in Same Business and Operating in the Same Geographical Area

Posted on January 24, 2012 by Gmlevine

Distance is not only geographical and temporal but also measured by product or service offerings. The principle underlying temporal distance is that the respondent could not have registered the domain name in bad faith if the trademark had not then come into existence. Subsequent bad faith use (except in the view of panelists who argue for “retrospective” bad faith) is not grounds for forfeiture of the domain name under UDRP. The greater the distance of all three combined the less likely that the complainant can prevail on the bad faith element, which is the ultimate test.

Geographical distance by itself does not favor the respondent’s good faith claim, but temporal distance (acquiring the domain name prior to existence of the … Read the rest

Posted in Denial of knowledge, Geographic distance, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Para. 4(c)(i) of the Policy, Prima facie case, Totality of facts, Website content | Tagged , , , , | 1 Comment