Category Archives: Cybersquatting

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

Safe Harbor Under the ACPA: Reasonable Grounds for Believing Use Not Unlawful

Posted on March 12, 2013 by Gmlevine

Both the Anticybersquatting Consumer Protection Act (ACPA) and the Uniform Domain Name Resolution Policy, paragraph 4(c)(i-iii) (UDRP) prescribe safe harbor defenses, but the ACPA provides a defense not expressly found in the UDRP: bad faith “shall not be found in any case in which the court determines that the person believed and had reasonable grounds to believe that the use of the domain name was a fair use or otherwise lawful.”15 U.S.C. §1125(d)(1)(B)(ii). The question is, How is the statute to be construed, narrowly or forgivingly? A good review of the answer, narrowly, can be found in Web-Adviso v. Trump, 11-cv-1413 (EDNY, February 28, 2013).

The ACPA imposes civil liability on a person who, “without regard to the goods … Read the rest

Posted in Anticybersquatting Consumer Protection Act, Cybersquatting, UDRP | Tagged , | Leave a comment

Vendor/Agent Holding Domain Name Hostage for Alleged Nonpayment of Fees

Posted on December 27, 2012 by Gmlevine

In a federal action under 15 U.S.C. 8131 (Cyberpiracy protections for individuals) the district court for the Middle District of Florida held that “cyber-extortion is not a permissible way of recovering a debt”), Salle v. Meadows, 6:07-cv-1089-Orl-31 (August 6, 2007). No federal cases on the “debt” issue have been found under Sec. 1125(d), but there is no reason to believe an unfavorable ruling for the trademark owner. Under the UDRP “cyber-extortion” of the kind litigated in Salle is generally regarded as being outside the scope of the Policy.

Vendor/Agent disputes generally rest on claims of contractual obligations, unrequited. Parties are not strangers to each other. The consensus holds that genuine disputes are outside the scope of the Policy [… Read the rest

Posted in Abusive intent, Action in court of law, Appeal judgment, Cybersquatting, Cybersquatting / Not cybersquatting, Defenses, Employee/agent/vendor, Hijacking domain name, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Policy Scope | Tagged , , | Leave a comment

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

Denying Safe Harbor to Domain Names that Resolve to a Criticism Website

Posted on September 27, 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);
})();

Question 2.4 of the WIPO Overview of WIPO Panel Views on Selected U.D.R.P. Questions asks, “Can a criticism site generate rights and legitimate interests?” The answer is Yes, but.  The “but” could depend on the Panel assigned to resolve the dispute; it could also depend upon whether the criticism was the ultimate intended purpose.  Unlike answers to other questions which record consensus views, 2.4 notes that there are two opposing Views.  This one of only two circumstances for which the WIPO … Read the rest

Posted in Abusive intent, Commentary / criticism, Cybersquatting, Free speech, Intent to use, Para. 4(a)(iii) of the Policy, Para. 4(b)(i) of the Policy, Para. 4(b)(iv) of the Policy, Para. 4(c)(iii) of the Policy, UDRP | Tagged , , | Leave a comment