Category Archives: Jurisdiction

Acquiescence Not a Defense to Cybersquatting, But Ground for Denying Transfer

Posted on September 7, 2011 by gmlevine

The Panel in Iberostar Hoteles Y Apartamentos, S.L. v. N/A, Yuri Smolyansky, Registrant Organization: N/A Registrant / Contact Privacy Inc., D2011-0952 (WIPO August 23, 2011) points out that “[t]he Policy does not provide for a defense of acquiescence.” That is, equitable defenses – acquiescence and laches – are not identified in the subparagraphs of paragraph 4(b) and are rarely the basis for granting or denying transfer. However, sleeping on rights and apparent acquiescence in trademark use have consequences, frequently unfavorable to the complainant in a UDRP proceeding.  Iberostar is no exception.

It may appear contradictory that although the Panel expressly rejected Respondent’s acquiescence argument in Iberostar Hoteles he nevertheless denied transfer. Putting it bluntly: “a decision which could have … Read the rest

Posted in Acquiescence, Action in court of law, Defenses, Dismissal vs denial of complaint, Equitable remedies, Initial interest confusion, Judicial proceedings, Jurisdiction, Para. 4(a)(iii) of the Policy, Reseller / Distributor, Within / Outside Scope | Leave a comment

Discretion to Terminate a Proceeding When Parties Have Also Commenced a Court Action

Posted on May 25, 2011 by gmlevine

Discretion to Terminate a Proceeding When Parties Have Also Commenced a Court Action

The UDRP is not a coordinate forum to a court of law and was not designed to supplant a court of law. It offers has a circumscribed jurisdiction that empowers the Panel to order a domain name cancelled or transferred to the complainant. That is the extent of the relief a Panel may grant; either form is akin to a mandatory injunction. Nevertheless, a Panel has the discretion to continue the proceedings even in the face of a prior pending action in a court of law. Paragraph 18(a) of the Rules of the Policy provides that “[i]n the event of any legal proceedings initiated prior to or … Read the rest

Posted in Action in court of law, Jurisdiction, Scope of the Policy, Suspension / termination, UDRP Rule 18(a), Within / Outside Scope | Leave a comment

UDRP's Jurisdiction Does Not Extend to Cases Where a Registered Domain Name is Subject to a Legitimate Dispute

Posted on January 19, 2011 by gmlevine

The UDRP offers a forum with limited jurisdiction to resolve a particular type of dispute in which a domain name registrant has allegedly misappropriated a trademark for commercial gain at the holder’s expense. The Policy does not presume to adjudicate claims for trademark infringement or business disputes that concern more than the domain name. The forum is neither a substitute for a court of law nor a trademark court. Yet within the scope of the Policy a trademark holder can obtain declaratory and injunctive but not monetary relief against a domain name registrant infringing its rights similar to although not as extensive as that which is available in the U.S. under the Anticybersquatting Consumer Protection Act. It accomplishes this in … Read the rest

Posted in Jurisdiction, Scope of the Policy, Shared interest in trademark, Within / Outside Scope | Leave a comment

Multiple Related Complainants Each With Individually Vested Trademark Rights

Posted on January 11, 2011 by gmlevine

ICANN’s Rules for the Uniform Domain Name Dispute Resolution Policy provide that “[a]ny person or entity may initiate a complaint” against a registrant who it accuses of registering a domain name identical or confusingly similar to a trademark in which it claims a right, Paragraph 3(a). WIPO’s Supplemental Rules state that “[a]ny term defined in the [ICANN] Rules shall have the same meaning in these Supplemental Rules.” The National Arbitration Forum’s Supplemental Rule 1(e) is more interpretative. It defines the party initiating a complaint as a “single person or entity claiming to have rights in the domain name, or multiple persons or entities who have a sufficient nexus who can each claim to have rights to all domain names listed … Read the rest

Posted in Dismissal vs denial of complaint, Jurisdiction, Multiple complainants, Para. 4(a)(i) of the Policy, UDRP, UDRP Rule 3(a) | Leave a comment

Having Trademark Rights, Not Failing to Assert Them Is the Threshold Issue

Posted on November 30, 2010 by gmlevine

The respondent’s sole contribution under paragraph 4(a)(i) of the Policy should be to confute the complainant’s assertion of jurisdiction: that the complainant either has no trademark or if it does the domain name is neither identical or confusingly similar to it. The term “has rights” means that the complainant has them at the time of filing the complaint rather than its having had them prior to the registration of the disputed domain name. The general rule is that acquisition of a trademark post-dating the registration of the domain name does not affect jurisdiction or the complainant’s standing to maintain the proceeding, even though it may foretell the result of the proceedings.

Set against the consensus that 4(a)(i) does not require … Read the rest

Posted in Dictionary words/Descriptive terms, Earlier registered domain name, Jurisdiction, Knowledge, Laches, Para. 4(a)(i) of the Policy, Standing, Timing of registration | Leave a comment