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Gerald M. Levine
Levine Samuel, LLP
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Trademark and Domain Name News
Category Archives: Complainant “in mind”
Trademarks Composed of Elements that Include Dictionary Words
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 Abusive registration, Confusing similarity, Identical, Monetizing domain names, Policing trademark, Taking advantage of trademark, Wayback Machine
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Inadvertent Lapse of Both Trademark Registration and Domain Name
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
Offer to Purchase vs. Counter Offer
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 Domain names as assets, Offer to purchase domain name, offering to sell domain name
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Registration “Before Notice” and Offering Bona Fide Goods or Services Good Defense to UDRP Complaint
While merely registering and holding a domain name confers no right or legitimate interest, a domain name can be legitimized if 1) “before any notice … of the dispute”, 2) respondent “has used or made demonstrable preparations to use the domain name”, and 3) “in connection with a bona fide offering of goods or services.” Paragraph 4(c)(i) of the Policy. Each of the elements must be demonstrated. It is not longevity alone that supports a respondent’s right – the real estate theory of adverse possession is not a recognized defense – but respondent’s use of the domain name in connection with a bona fide offering of goods or services may be. Each element has to be proved.
Typosquatting and Appearance of Typosquatting
A respondent telegraphs both intent and knowledge when it squats on a trademark by creating minor typographical variations. There are a number of recent examples of variations on COMERICA: as in (reversing “m” and “e”), (adding an additional “e” before “i”), (doubling letters) and (selecting letters adjacent on the qwerty keyboard, “u” and “i” ). Substituting a “d” for an initial “c” to form “domerica” (“d” is adjacent on the board above “c”) may be less obvious – the Respondent claimed it “ independently coined the distinctive mark DOMERICA as a portmanteau of the words “domains” and “America.” The Panel was unimpressed because Respondent offered no evidence to support its use of in the manner specified to pass the 4(c)(i) … Read the rest