Category Archives: Diverting to another website

Applying Laches as an Affirmative Defense in UDRP Disputes

Posted on January 26, 2013 by Gmlevine

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 , , | Leave a comment

Offer to Purchase vs. Counter Offer

Posted on November 4, 2012 by Gmlevine

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 , , | 1 Comment

The Binary versus the Unitary Concept of Abusive Registration

Posted on August 24, 2011 by gmlevine

A minority view has emerged, indeed is greatly insistent and inarguably articulate even if not persuasive, that questions a bedrock consensus of UDRP jurisprudence. Panelists of the earliest decided cases concluded that for the complainant to succeed it must plead and prove that the respondent registered (intent) and is using (present conduct) the domain name in bad faith. One consequence of this binary concept is that respondents who take advantage of later acquired trademarks are permitted retain their infringing domain names. The binary concept (the minority view insists) allows the respondent to continue its bad faith use and to confuse and deceive the Internet public. The criticized consensus is said by these panelists to be based on misinterpretation of an … Read the rest

Posted in Abusive intent, Binary / unitary concept, Conjunctive / disjunctive, Diverting to another website, Holding domain name inactive, Later acquired trademark rights, Para. 2 of the Policy, Para. 4(a)(iii) of the Policy, Targeting / Not targeting | Leave a comment

Good Faith in Registering Common Words and Phrases Exploited for Their Generic Meanings

Posted on May 13, 2011 by gmlevine

It is not illegitimate to use domain names for pay-per-click revenue. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, Para. 2.6: “Panels have generally recognized that use of a domain name to post parking and landing pages or pay-per-click [PPC] links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ or from ‘legitimate non-commercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder.”

The legitimacy issue is surveyed by two 3-member Panels involving the same respondent. Skycam, Inc. v. Administrator, Domain … Read the rest

Posted in Common expressions, Descriptive phrases, Diverting to another website, Generic/Descriptive terms, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Pay-per-click, Targeting / Not targeting, UDRP Rule 10(d) (evidence) | Leave a comment

Equal Protection for Unregistered Trademarks, Common Law and Civil Law

Posted on March 3, 2011 by gmlevine

Paragraph 4(a)(i) of the Policy is silent on whether the right the complainant is seeking to vindicate must be registered, but panelists within a few months of the UDRP’s implementation held that it was not necessary for a trademark to be registered by a governmental authority or agency for such rights to exist. The Policy “does not distinguish between registered and unregistered trademarks and service marks in the context of abusive registration of domain names,” The British Broadcasting Corporation v. Jaime Renteria, D2000-0050 (WIPO March 23, 2000).

Under U.S. trademark law for registration on the Principal Register the registrant must prove that it has made “substantially exclusive and continuous use [of a designation] as a mark … in commerce … Read the rest

Posted in Civil law, Common law protection, Competitor, Diverting to another website, Lanham Act, Opportunism, Proof, WIPO Overview | 1 Comment