RSS to Email
Archives
Gerald M. Levine
Levine Samuel, LLP
130 West 42nd Street,
12th Floor
New York, NY 10036
(212) 596-0851Trademark Databases
- USPTO (TESS)
- E-Justice, Europe
- EU Trademark Database (Office for Harmonization in the Internal Market [OHIM]
- UK Intellectual Property Office
- International Trademarks (National Board of Patents and Registration of Finland)
- WIPO Gold (“The Global IP Reference Resource”)
- WIPO Global Brand Database
- TM View (Beta)
- Intellectual Property Digital Library (WIPO)
- Legal Corner for Authors
Trademark and Domain Name News
Category Archives: Denial of knowledge
Parties in Same Business and Operating in the Same Geographical Area
Distance is not only geographical and temporal but also measured by product or service offerings. The principle underlying temporal distance is that the respondent could not have registered the domain name in bad faith if the trademark had not then come into existence. Subsequent bad faith use (except in the view of panelists who argue for “retrospective” bad faith) is not grounds for forfeiture of the domain name under UDRP. The greater the distance of all three combined the less likely that the complainant can prevail on the bad faith element, which is the ultimate test.
Geographical distance by itself does not favor the respondent’s good faith claim, but temporal distance (acquiring the domain name prior to existence of the … Read the rest
Posted in Denial of knowledge, Geographic distance, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Para. 4(c)(i) of the Policy, Prima facie case, Totality of facts, Website content
Tagged different market, Geographical distance, Same industry, Taking advantage of trademark, Temporal distance
1 Comment
A Complainant's Right to Maintain a UDRP Proceeding Not Defeated Because Its Trademark is From a Different Jurisdiction Than Respondent's Domicile
A complainant has standing to prosecute a UDRP dispute regardless of the jurisdiction in which it acquired its trademark or of the parties’ residencies in different countries. That a trademark is registered or acquired in a different jurisdiction than the respondent’s domicile does not defeat the right to maintain a UDRP proceeding, although it may be a factor in determining bad faith. The term “rights” means a ripened trademark in any jurisdiction in the world. It is immaterial the relative locations of the parties. The Policy does not require the complainant’s trademark to have been obtained in a country in which the respondent resides or operates, only that the complainant can establish rights in some jurisdiction. Koninklijke KPN N.V. v. … Read the rest
Plain English Words Adopted as Trademarks by Foreign Companies
Domain names that mimic trademarks composed of common words that have achieved extraordinary penetration in the domestic and international marketplaces are more likely to be seen as opportunistic registrations [Honeywell International Inc. v. Celeris Controls, FA1010001351938 (Nat. Arb. Forum November 15, 2010)]; less likely with trademarks confined to niche markets [Webvisions Pte Ltd. v. WebVision, D2010-1702 (WIPO November 26, 2010) (<webvision.com>)]; and less likely further with trademarks composed of the commonest of dictionary words [CareFree Homes II, L.P. v. Worldwide Media, Inc. / Domain Administrator, FA1010001351494 (Nat. Arb. Forum December 7, 2010)].
Foreign complainants with trademark registrations consisting of plain English words that may have penetration in their domestic marketplaces but are unrecognized out … Read the rest
Registering a Domain Name Composed of Common Terms That Have Many Meanings
A person is free to choose any string of phonetic elements or numbers as a domain name as long as the choice does not infringe the legal rights of any third party. In making a choice, the registrant is doubly bound. It represents and warrants in the registration agreement and further assents to a similar although more detailed provision in the Policy that
(a) the statements that you made in your Registration Agreement are complete and accurate; (b) to your knowledge, the registration of the domain name will not infringe upon or otherwise violate the rights of any third party; (c) you are not registering the domain name for an unlawful purpose; and (d) you will not knowingly use the