Category Archives: Geographic distance

Parties in Same Business and Operating in the Same Geographical Area

Posted on January 24, 2012 by Gmlevine

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 , , , , | 1 Comment

Trademark Terms Distinctive in One Territorial Jurisdiction, Undistinctive in Another

Posted on November 10, 2011 by Gmlevine

Distinctiveness (despite the affirmativeness of the word) is a fluid concept. It could mean “distinctive” in its class but not “distinctive enough” to prevent others from using it for their own purposes in a different class. So, too, a term accepted by a trademark office can be regarded as distinctive within its jurisdiction, but un-distinctive in another. Words that may appear arbitrary in one jurisdiction, in another may have a cultural meaning. For example, in CeWe Color AG & Co. OHG v. Shenbun Limited, D2008-0810 (WIPO July 10, 2008) (<cewe.net>), the Complainant believed that its trademark CEWE was arbitrary, as it is in Germany, but Respondent showed that “cewe” is used as a “slang word in the Bahasa Indonesia … Read the rest

Posted in Abusive intent, Commercial gain, Cybersquatting, Geographic distance, Insufficiency of evidence, Knowledge, Reputation in the marketplace | Tagged , , | Leave a comment

Timing, Geographic Distance and Knowledge of Trademark

Posted on May 10, 2011 by gmlevine

How does a trier determine that the respondent registered a disputed domain name in bad faith when the respondent fails to make an appearance in the proceeding? Whereas in a court of law a defendant’s default in answering a complaint is an admission of liability, in an ICANN proceeding the complainant prevails only if it proves all three elements of the Policy. The rules of the Policy allow for inferences to be drawn from evidence both apparent and hidden. The Panel notes in La Quinta Worldwide, L.L.C v. Rudi Seiberlich, D2011-0385 (WIPO April 11, 2011), “it is possible to draw inferences from the evidence that has been submitted and in some cases from silence.” Rule 14(b) of the Policy … Read the rest

Posted in Geographic distance, Knowledge, Parking, Passive use, Prima facie case, Trademark in mind | Leave a comment

Complainant Geographically Remote from Respondent's Market

Posted on December 16, 2010 by gmlevine

A complainant’s trademark may be well known internationally in its particular market without being known generally or to the respondent. The disputed domain name in Webvisions Pte Ltd. v. WebVision, D2010-1702 (WIPO November 26, 2010), <webvision.com>, is almost identical to WEBVISIONS, differing only in omitting the plural “s”.  Changing the form of a name (which may be taken as typosquatting) does not distinguish the domain name from a trademark and is not sufficient to dispel any likelihood of confusion. Indeed, “many cases have found that the addition, omission or transposition of a single letter can be a common source of confusion.”  Indeed, “many cases have found that the addition, omission or transposition of a single letter can be a … Read the rest

Posted in Evidence, Geographic distance, Para. 4(b)(ii) of the Policy, Para. 4(c)(i) of the Policy, Targeting, UDRP Rule 10(d) (evidence) | Leave a comment