Category Archives: Cybersquatting / Not cybersquatting

Insufficient Evidence for Respondent’s Lack of Rights or Legitimate Interests – Not Even the Iconic Trademark Owner Is Excused From Having to Offer Proof

Posted on April 10, 2013 by Gmlevine

Just as complainants cannot prevail on the strength of their trademarks which only proves the first requirement that it has standing to maintain the proceedings, so respondents do not forfeit their domain names on default of responding to the complaint. This message continues to be lost even to the most prestigious law firms and the wisest counselors. If nothing but suppositional allegations are offered as proof for paragraphs 4(a)(ii) or 4(a)(iii) relief will be denied. Should that verdict be applied to iconic trademarks such as AOL, as it was in AOL, Inc. v. ChengshuangLi, FA1302001483339 (Nat. Arb. Forum March 26, 2013)? The Panel made the following pronouncement: the “Complainant’s entire argument” on the issue of rights or legitimate interests … Read the rest

Posted in Abusive intent, Burden of proof, Burden of proof / persuasion, Cybersquatting / Not cybersquatting, Default, Insufficiency of evidence, Intent / Tartgeting, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Reputation in the marketplace, UDRP Rule 10(d) (evidence) | Tagged , | Leave a comment

Demonstrable Preparations for Use Before Notice

Posted on March 7, 2013 by Gmlevine

The 3-member Panel in Cheezburger, Inc. v. WeKnowMemes LLC (c/o Dynadot Privacy), D2012-2452 (WIPO February 19, 2013) considered confusing similarity between KNOW YOUR MEME and <weknowthemes.com> “a close question … [b]ut the overall impression is sufficiently similar, especially for the Domain Name used for a competing website, that the Panel concludes the first Policy element has been satisfied.” While this met the test for standing, it was insufficient in light of Respondent’s rebuttal evidence that before notice it had established a web based service. It is a complainant’s burden to demonstrate that respondent chose the domain name with the intention of taking advantage of the trademark.

Where a domain name is a phrase composed of dictionary words that is … Read the rest

Posted in Acttive / passive use, Burden of proof / persuasion, Common expressions, Cybersquatting / Not cybersquatting, Evidence, Generic/Descriptive terms, Legitimate use, Opportunism, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, UDRP, Website content, Website services | Tagged , | Leave a comment

Recovering Lapsed Domain Names

Posted on February 27, 2013 by Gmlevine

For a complainant to succeed in recapturing a lapsed domain name it must both anticipate and overcome respondent’s rebuttal that it has rights or legitimate interests in the domain name. To fail on the prima facie case is to fail utterly because failure ends the case. Geographic proximity may make a difference in the assessment as does the relative strength or weakness of the trademark, but these factors are not alone sufficient against a respondent’s persuasive explanation for choosing the lapsed domain name. This is true even where parties presently compete if there are intervening circumstances favoring respondent. An example of complainant’s challenge, how difficult it can be, is illustrated in PFIP, LLC v. Blast Fitness Group, LLC / Thomas … Read the rest

Posted in Abusive intent, Burden of proof / persuasion, Common law protection, Cybersquatting / Not cybersquatting, Descriptive phrases, Inadvertent lapse of renewal, Opportunism, Para. 4(b)(iv) of the Policy, Para. 4(c)(i) of the Policy, Timing of registration, Unregistered trademark | Tagged , , | Leave a comment

Use in Bad Faith Alone Is Insufficient to Prove Cybersqatting

Posted on January 17, 2013 by Gmlevine

I have pointed out in earlier Notes that the Uniform Domain Name Resolution Policy (UDRP) and the Anticybersquatting Protection Act (ACPA) are constructed on different models for proof of cybersquatting. The UDRP requires proof of bad faith in the conjunctive; while the standard demanded under the ACPA is either registration or use in bad faith. There are federal cases in which complainant trademark owner has subsequently prevailed on use in bad faith even where defendant registered the domain name in good faith. Under UDRP use in bad faith may support (inferentially) registration in bad faith, but only if the facts align for proof of targeting, but not otherwise. Where complainant trademark owner admits it authorized respondent to register the disputed … Read the rest

Posted in Abusive intent, Acquiescence, Anticybersquatting Consumer Protection Act, Cybersquatting / Not cybersquatting, Drawing inferences, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Post termination of contract | Tagged , , | Leave a comment

Respondent’s Burden of Persuasion is Disjunctive: Rights or Legitimate Interests

Posted on January 11, 2013 by Gmlevine

Respondent’s burden of persuasion under paragraph 4(a)(ii) of the Policy is disjunctive. It satisfies the requirement if it has either a right or a legitimate interest in the disputed domain name, in which event the complaint must be dismissed. The test is framed in the present tense: “[Respondent] lacks any right or legitimate interest” in the disputed domain name. Early Panels quickly recognized that complainants were at a disadvantage in marshaling evidence about respondents’ circumstances except inferentially what could be gleaned from the website to which domain name resolves. For this reason complainant’s proof bar is low; it is satisfied by presenting a prima facie case. The test is not whether complainant has “more of an interest than Respondent in … Read the rest

Posted in Abusive intent, Burden of proof, Common expressions, Cybersquatting / Not cybersquatting, Delay, Descriptive phrases, Dictionary words/Descriptive terms, Para. 4(a)(iii) of the Policy, Protecting IP, Targeting, UDRP Rule 10(d) (evidence) | Tagged , , | Leave a comment