Category Archives: Generic/Descriptive terms

When Inactivity Rises to the Level of Bad Faith

Posted on April 13, 2012 by Gmlevine

One of the central propositions of UDRP jurisprudence is that mere assertion of bad faith is insufficient for the complainant to establish infringement of its rights. This is so even if respondent lacks rights or legitimate interests in the domain name. The Panel in Murad, Inc. v. Stacy Brock, FA1202001430865 (Nat. Arb. Forum March 31, 2012) took the unusual position of making no formal findings under the first and second elements to focus on the bad faith: “for the reasons set forth below, the Panel finds that it need not rule on this element of the Policy.” Whether or not complainant prevails on the first two elements its fate hangs on the third.

Inactivity (or the expressive oxymoron, “passive … Read the rest

Posted in Common expressions, Descriptive phrases, Domain names, Drawing inferences, ftp services, Generic/Descriptive terms, Para. 4(a)(iii) of the Policy, Parking, Passive use, Recovering domain name, UDRP Rule 10(d) (evidence) | Tagged , , , | Leave a comment

Speculating in Domain Names and Monetizing them Lawful Commercial Activities

Posted on October 7, 2011 by gmlevine

That a domain name is identical or confusingly similar to a complainant’s trademark is only part of the evidentiary journey. When that fact is coupled with proof that the respondent lacks any right or legitimate interest in the domain name it strengthens the trademark owner’s claim. Taking advantage of the trademark’s reputation to attract Internet traffic strengthens further but is still insufficient for abusive registration until it can be deduced that the respondent registered the domain name for the purpose it is being used. This involves showing only one answer to the question “Why did the respondent register the domain name in the first place?”

Let us take a step back. The term “legitimate interest” in paragraphs 4(a)(ii) and 4(c) … Read the rest

Posted in Advertising, Dictionary words/Descriptive terms, Earlier registered domain name, Generic/Descriptive terms, Later acquired trademark rights, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, Speculating / Monetizing, Targeting | Tagged | Leave a comment

Factors In Favor Of and Against a Party

Posted on September 2, 2011 by gmlevine

Intention can be deduced from both sound and silence. What a party does and says or the reverse is evidence for and against relief. A respondent may deny knowledge of a complainant’s trademark, but gives itself away through the links on its website. The more well-known the trademark, the greater the likelihood that the respondent’s denial is unworthy of belief, but its credibility improves as the trademark weakens. This is as it should be because trademark law is not intended to suppress competition or stifle commerce where respondents have chosen common words, phrases and expressions pertinent in describing their own goods or services. The weaker the trademark the heavier the burden.

Sets of terms may be confusingly similar but the … Read the rest

Posted in Abusive intent, Burden of proof, Drawing inferences, Earlier registered domain name, Evidence, Generic/Descriptive terms, Innocent registration, Para. 4(c)(i) of the Policy, Reputation in the marketplace, Similar - Not confusing, Targeting / Not targeting | Leave a comment

Totality of Facts Analysis of Bad Faith for Common Words and Descriptive Phrases

Posted on July 20, 2011 by gmlevine

Friction between holders of trademarks composed of common words or descriptive phrases and domain name registrants rests on the variable meanings of the words and phrases. For the complainant its choice acts as a source indicator; for the respondent the same words convey only their attributed (cultural) meanings. As a general rule respondents have a right to register and use domain names composed of commonly used words and descriptive phrases provided that the registrations are in good faith. The proviso “good faith” most obviously applies to registrations that precede a complainant’s trademark acquisition. Post-registration puts in issue respondent’s knowledge of the complainant’s trademark and use of the domain name. Respondents’ often expressed view that common words and phrases are always … Read the rest

Posted in Abusive intent, Burden of proof, Constructive notice, Dictionary words/Descriptive terms, Generic/Descriptive terms, Later acquired trademark rights, Para. 4(a)(iii) of the Policy, Totality of facts | Leave a comment

A Complainant's Right to Maintain a UDRP Proceeding Not Defeated Because Its Trademark is From a Different Jurisdiction Than Respondent's Domicile

Posted on May 18, 2011 by gmlevine

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

Posted in Complainant "in mind", Denial of knowledge, Dictionary words/Descriptive terms, Generic/Descriptive terms, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Parking, Passive use, Standing, Trademark in mind | Leave a comment