Author Archives: gmlevine

About gmlevine

Attorney, New York City, commercial litigation, publishing, contracts, Internet

Proof of First Use in Commerce Earlier than Domain Name

Posted on October 21, 2011 by gmlevine

Ordinarily, a domain name registered prior to the complainant’s acquisition of a trademark could not have been registered in bad faith “because the registrant could not have contemplated the complainant’s then non-existent right,” WIPO Overview paragraph 3.1. The trademark and disputed domain name in Spacebound, Inc. v. Amaben Internet Services Inc., D2011-1403 (WIPO October 3, 2011) are PRICE PLUNGE (registered June 21, 2011, application filed April 10, 2010, first use in commerce December 12, 2010) and <price-plunge.com> (registered February 24, 2011). Complainant registered <priceplunge.com> on April 5, 2010. The Respondent defaulted.

Default in answering the complaint, however, does not lead to an automatic ruling for complainant. Brent Redmond Transportation, Inc. v. SSI Express, D2008-1765 (WIPO December 30, 2008) … Read the rest

Posted in Acttive / passive use, Circumstantial proof, Default, Targeting / Not targeting, Timing of registration | Tagged , | Leave a comment

Threatening Complainant as Grounds for Abusive Registration

Posted on October 19, 2011 by gmlevine

“Given the human capacity for mischief in all its forms” (said one Panel) “the Policy sensibly takes an open-ended approach to bad faith, listing some examples without attempting to exhaustively enumerate all its varieties,” Worldcom Exchange, Inc v. Wei.com, Inc., D2004-0955 (WIPO January 5, 2005) (<wei.com>). There are three acts that are presumptively abusive, namely pointing or threatening to point the disputed domain name to a website featuring “adult content”, extorting money to return a domain name fraudulently transferred (allegedly by someone other than the respondent who obtained it in good faith) and phishing.

In Motorola Inc. v. NewGate Internet, Inc., D2000-0079 (WIPO April 20, 2000) the Respondent threatened to “use the domain to host an ‘adult sex … Read the rest

Posted in Abusive intent, Fraudulent transfer, Hijacking domain name, Para. 4(b)(iv) of the Policy, Pornography, Redirecting Internet user | Tagged | Leave a comment

Adopting Complainant’s Trademark For a Criticism Website

Posted on October 14, 2011 by gmlevine

Free speech is not listed as one of the Policy’s examples of a right or legitimate interest in a domain name, but it is clearly subsumed in “fair use” and qualifies as a defense under paragraph 4(c)(iii) of the Policy. The defense rests on the proposition that speaking in opposition to a trademark owner was a right worthy of protection. The WIPO Final Report paragraph 172 provides that “Domain name registrations that are justified by legitimate free speech rights or by legitimate non-commercial considerations would … not be considered to be abusive.” Just as quickly as free speech was recognized as a protectable right there developed two lines of reasoning that continue to split panelists. The split is unsettling because … Read the rest

Posted in Free speech, Good faith registration, Para. 4(c)(iii) of the Policy, Prefixes / suffixes, UDRP, Website content | Tagged , | Leave a comment

Identity of Terms Within a String Do Not Add Up To Confusing Similarity

Posted on October 12, 2011 by gmlevine

Paragraph 4(a)(i) of the Policy is not satisfied by simply showing that the trademark and the domain name bear a similarity of parts, unless it suggests the whole. Whether the domain name is “confusingly similar” to the trademark focuses on differences in the composition of the string of letters, words or numbers. Prefixes and suffixes generally do not create a distinctive name – a geographic identifier for example added to a well known trademark is no more than the well known trademark with a geographic identifier, Red Bull GmbH v. Chai, D2003-0709 (WIPO November 11, 2003) (<thairedbull.com>, short for Thailand) – but added phrases to a dominant well known trademark can create an entirely new meaning, <synagisisbadforyou.com> and <synagisisnotsafe.com>, … Read the rest

Posted in Benefit of the doubt, Confusing similarity, Cybersquatting / Not cybersquatting, Para. 4(a)(i) of the Policy, Para. 4(c)(i) of the Policy, Prefixes / suffixes | Tagged , | Leave a comment

Speculating in Domain Names and Monetizing them Lawful Commercial Activities

Posted on October 7, 2011 by gmlevine

That a domain name is identical or confusingly similar to a complainant’s trademark is only part of the evidentiary journey. When that fact is coupled with proof that the respondent lacks any right or legitimate interest in the domain name it strengthens the trademark owner’s claim. Taking advantage of the trademark’s reputation to attract Internet traffic strengthens further but is still insufficient for abusive registration until it can be deduced that the respondent registered the domain name for the purpose it is being used. This involves showing only one answer to the question “Why did the respondent register the domain name in the first place?”

Let us take a step back. The term “legitimate interest” in paragraphs 4(a)(ii) and 4(c) … Read the rest

Posted in Advertising, Dictionary words/Descriptive terms, Earlier registered domain name, Generic/Descriptive terms, Later acquired trademark rights, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, Speculating / Monetizing, Targeting | Tagged | Leave a comment