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Gerald M. Levine
Levine Samuel, LLP
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Trademark and Domain Name News
Category Archives: Defenses
Applying Laches as an Affirmative Defense in UDRP Disputes
Panels in formative cases held there was “no room for general equitable doctrines under the Policy such as would be possessed by Courts in common law jurisdictions.” Edmunds.com, Inc. v. Ult. Search Inc., D2001-1319 (WIPO February 1, 2002). This is consistent with the recommendation in the WIPO Final Report that “a time bar to the bringing of claims in respect of domain names (for example, a bar on claims where the domain name registration has been unchallenged for a designated period of years) should not be introduced.” Paragraph 17. In fact, a “time bar” was rejected in a coda to “Time Limitations for Bringing Claims.” Paragraph 199. One Panel explained that the “remedy available in an Administrative Proceeding under the … Read the rest
Posted in Defenses, Delay, Diverting to another website, Insufficiency of evidence, Laches, Legitimate use, Para. 4(a)(iii) of the Policy, Para. 4(b)(i) of the Policy, UDRP Rule 10(d) (evidence), UDRP Rule 18(a), Unfair use, Warranties, WIPO Overview
Tagged Right and Legitimate Interest, Sleeping on rights, Timing of complaint
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Vendor/Agent Holding Domain Name Hostage for Alleged Nonpayment of Fees
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 Civil remedies, Court of law, Hostage
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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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Why Should a Complainant Who Has No Actionable Claim Be Excused of Wrongful Conduct in Maintaining a UDRP Proceeding?
A claim of reverse domain name hijacking (RDNH) ultimately rests on complainant untruthfully certifying that “the information contained in th[e] Complaint is to the best of [its] knowledge complete and accurate [and] that th[e] Complaint is not being presented for any improper purpose, such as to harass [the respondent].” Paragraph 3(b)(xiv) of the Rules of the Policy. It is not unlike Rule 11 of the Federal Rules of Procedure in that it requires the complainant to certify that the “assertions in this Complaint are warranted under these Rules and under applicable law as it now exists or as it may be extended by a good-faith and reasonable argument.”
Two UDRP opinions have been filed that focus attention on complainants’ conduct. … Read the rest
Respondent’s Right or Legitimate Interest Trumps Complainant’s Trademark Right
There have been a number of cases lately in which complainant has either failed to prove a prima facie case or been unable to overcome respondent’s evidence of its right or legitimate interest in the disputed domain name. Respondent’s use of the domain name is a critical factor, but so too is the trademark. Longevity and recognition in the marketplace cannot trump a respondent’s right or legitimate interest unless it fails to offer affirmative evidence of its choice.
A respondent’s loss of its trademark for failure to file a declaration of use between the 5th and 6th years of registration is not fatal to either its right or legitimate interest in a domain name. Stonz Wear, Inc. v. Framez l-Wear… Read the rest
Posted in Defenses, Good faith registration, Insufficiency of evidence, Para. 4(a)(ii) of the Policy, Para. 4(c)(ii) of the Policy, Prima facie case, UDRP Rule 10(d) (evidence), UDRP Rule 15(a)
Tagged Affirmative defenses, Prima facie case, Reverse Domain Name Hijacking, Sufficiency of evidence, Surnames
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