Category Archives: Advertising

Mixed Use (Vanity Email and PPC) of Surname Trademarks

Posted on November 25, 2012 by Gmlevine

var _gaq = _gaq || [];
_gaq.push(['_setAccount', 'UA-11310882-1']);
_gaq.push(['_trackPageview']);

(function() {
var ga = document.createElement(‘script’); ga.type = ‘text/javascript’; ga.async = true;
ga.src = (‘https:’ == document.location.protocol ? ‘https://ssl’ : ‘http://www’) + ‘.google-analytics.com/ga.js’;
var s = document.getElementsByTagName(‘script’)[0]; s.parentNode.insertBefore(ga, s);
})();

Registering surnames for operating a vanity email service is a legitimate business model. The problem comes when the trademark is well-known or famous and respondent also deploys the domain name for an advertising website. Tucows.com Co. is at the center of this kind of dispute. It has succeeded where the use is consistent with the model – Ancien Restaurant Chartier v. Tucows.com Co., D2008-0272 (WIPO May 6, 2008); Markel Corporation. v. Tucows.com Co., D2007-1750 (WIPO June 5, 2008)– and … Read the rest

Posted in Abusive intent, Advertising, Cybersquatting, Para. 4(a)(ii) of the Policy, Para. 4(b)(iv) of the Policy, Pay-per-click, Personal name, Surname, Suspension / termination, Vanity e-mail | 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

Registering Fan Club Domain Names: Ambivalence to Unfavorable

Posted on August 16, 2011 by gmlevine

Of all the WIPO Views on Selected UDRP Questions, two stand out for Panels being in disagreement. Criticism sites (paragraph 2.4) and Fan sites (paragraph 2.5). For answers to all the other questions there is consensus. The two questions are as follows:

2.4 Can a criticism site generate rights or legitimate interests in the disputed domain name?
2.5 Can a fan site generate rights or legitimate interests in the disputed domain name?

This Note focuses on fan sites. In most instances celebrities (athletes, artists, authors, entertainers, film stars etc.) do not have registered trademarks and come to the UDRP proceedings hoping to persuade the Panel that they have common law rights to their names. Their problem and the registrant-fan’s right … Read the rest

Posted in Abusive intent, Advertising, Burden of proof / persuasion, Fair use, Fan club, Laches, Para. 4(a)(ii) of the Policy, Para. 4(c)(iii) of the Policy, WIPO Overview | Leave a comment