Category Archives: bad faith use

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

Offer to Purchase vs. Counter Offer

Posted on November 4, 2012 by Gmlevine

It makes a difference which party initiates a negotiation to sell or purchase a disputed domain name. In SIX Group AG v. Xedoc Holding SA, D2012-1548 (WIPO October 11, 2012) the Complainant’s cause for complaint concerned Respondent’s redirected use of as a pornographic website . But, “six” is a weak mark: “there is extensive third party use of the term ‘six’, both as trade marks and as domain names, and that it cannot by any stretch of the imagination be considered famous or exclusively associated with the Complainant.” The question of “rights or legitimate interests” in a domain name identical or confusingly similar to a trademark (however weak it may be) depends on use only if there is evidence … Read the rest

Posted in bad faith use, Burden of proof / persuasion, Complainant "in mind", Cybersquatting / Not cybersquatting, Defenses, Diverting to another website, Legitimate use, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, Pay-per-click, Pornography, Targeting, Website content | Tagged , , | 1 Comment

It Is Not Who You Say You Are, But Who You Are That Counts

Posted on December 9, 2011 by Gmlevine

For a respondent to succeed in showing it is who it says it is it must make an affirmative showing that it “ha[s] been commonly known by the domain name, even if [it has] acquired no trademark or service mark rights” [Paragraph 4(c)(ii) of the Policy]. In determining whether respondent establishes this defense it is settled that its rights must have existed prior to registration and not coincident with it – Sony Kabushiki Kaisha aka Sony Corporation v. Sony Holland, D2008-1025 (WIPO October 2, 2008) (Complaint denied). Respondent’s nickname “Sony” derives from “Sonia.” The problem for the Complainant is that her married name, “Holland” is also the name of a country in which Complainant does business – and not … Read the rest

Posted in bad faith use, Knowledge, Links to competitive goods or services, Opportunism, Para. 4(a)(iii) of the Policy, Para. 4(c)(ii) of the Policy, Targeting / Not targeting | Tagged | Leave a comment

Asserting Rights to Domain Names Allegedly Owned by Client Customer Who Either Is No Longer in Business or a Figment of the Respondent's Imagination

Posted on June 22, 2011 by gmlevine

Domain names violate the Policy when the purpose for their registration is to take advantage of another’s trademark. Intent is an implicit element of proof. This is why common words used as domain names for their everyday meaning without proof that the respondent had the complainant’s trademark in mind resist monopolization. In many instances, the question of good and bad faith is determined by context. The respondent in Viking Office Products, Inc. v. Natasha Flaherty a/k/a ARS – N6YBV, FA1104001383534 (Nat. Arb. Forum May 31, 2011) (discussed June 14) persuasively explained her choice of “Viking” but the respondent in Viking Office Products, Inc. v. Multisys Computers Limited, FA1104001385981 (Nat. Arb. Forum June 15, 2011) did not.

Context does … Read the rest

Posted in Abusive intent, bad faith use, Burden of proof / persuasion, Commercial gain, Complainant "in mind", Dictionary words/Descriptive terms, Links to competitive goods or services, Opportunism, Para. 4(a)(iii) of the Policy, Targeting, Website content | Leave a comment

Targeting Complainant’s Trademark is an Essential Element for Bad Faith

Posted on December 2, 2010 by gmlevine

Where a number of parties share a right to a trademark the complainant has the burden of demonstrating that it was the one targeted by the respondent. In OVB Vermögensberatung AG v. Michele Dinoia and SZK.com, D2009-0307 (WIPO May 6, 2009) for example it was clear from the website content that the Respondent had another company in mind; not the Complainant. “The use of a domain name for third-party advertising is not per se illegitimate under the Policy, provided that the respondent is not seeking to take advantage of the complainant’s rights.” Yeshiva University v. SS Media, Joy Dhivakar S Singh, D2010-1588 (WIPO November 24, 2010) is a variant of OVB in that the website appears to be … Read the rest

Posted in bad faith use, Burden of proof, Concurrent rights, Insufficiency of evidence, Opportunism, Para. 4(a)(iii) of the Policy, Shared interest in trademark, Targeting | Leave a comment