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Gerald M. Levine
Levine Samuel, LLP
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Trademark and Domain Name News
Category Archives: Jurisprudence
Deliberative Conversations and the Making of Domain Name Jurisprudence
You may well ask, What does deliberative conversation have to do with the making of domain name jurisprudence? Mention was made of conversation in the Binary/Unitary Note last week. Ideas have to come from somewhere and once they are uttered interlocutors test and return them as received or modified. There are a number of interesting cases in which dissenters disapproved of the majority’s use of the Policy to transfer the disputed domain name. I pass over these cases for the moment, noting however that the majority view has prevailed, to focus on another early case, Firstgate Internet A.G. .v. David Soung, D2000-1311 (WIPO January 29, 2001) which offers a good illustration of what I mean by deliberative conversation. Initially, … Read the rest
What Is Meant By "Mandatory" in the Phrase "Submit to a Mandatory Proceeding"?
Paragraph 4 of the Policy describes the arbitral procedure as a “mandatory administrative proceeding.” This should not be misunderstood to mean that the respondent is compelled to appear. Indeed, statistically respondents default 85% of the time. The term “mandatory” is used in the sense that respondents are “obliged by virtue of the [registration] agreement to recognize the validity of a proceeding initiated by a third-party claimant,” Storey v. Cello Holdings, L.L.C., 347 F.3d 370, 381 (2nd Cir. 2003). It also doesnot mean that the respondent has no jurisdictional alternative. The first sentence of paragraph 4(k) of the Policy provides that “the mandatory administrative proceeding requirements set forth in Paragraph 4 shall not prevent either you or the complainant from … Read the rest
Inactivity of a Domain Name Registered Many Years Prior to Accrual of Trademark Is Not Grounds for Finding Registration in Bad Faith
It is undoubtedly true that a respondent who holds inactive for many years a domain name identical to a trademark and is unresponsive to a Rule 12 Procedural Order to dislcose its use will fall short of rebutting a complainant’s allegation that it lacks rights or legitimate interests in the disputed domain name. However, a complainant does not prevail on proving 2/3rds of the Policy requirements. It also has to prove that the domain name was registered in bad faith. While there are factual circumstances under which a passively held domain name can support a finding of bad faith registration, it is not for a dictionary word. The analysis of passive use is traceable to Telstra Corporation Limited v. Nuclear … Read the rest
Accrual of Trademark Rights: Principal and Supplemental Registers
UDRP is not centric to any particular national law, but where the parties are “domiciled in the United States and United States courts have recent experience with similar disputes … the Sole Panelist shall look to rules and principles of law set out in decisions of the courts of the United States,” EAuto, L.L.C. v. Triple S. Auto Parts d/b/a Kung Fu Yea Enterprises, Inc., D2000-0047 (WIPO March 24, 2000). The dispute in Live Link, Inc. v. R Schwartz and Virtual Dates, Inc., FA1007001333180 (Nat. Arb. Forum August 26, 2010) concerned accrual of right where the Complainant relies on a trademark registered on the Supplemental Register. While a trademark registered on the Principal Register is presumptively valid and … Read the rest
Application for Trademark Registration By Itself Does Not Qualify as a Right
A certificate of registration satisfies the threshold requirement for maintaining a UDRP proceeding while a mere “intent to use” application to register a trademark or registration on the Supplemental Register does not. The consensus is that no “presumption [of validity] arises from a pending application to register a mark,” Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 17, 2001). This was particularly highlighted in Martha Stewart Living Omnimedia, Inc. v. Joe Perez, FA0904001259275 (Nat. Arb. Forum June 24, 2009) in which the USPTO initially rejected the trademark for registration on the Principal Register. The Respondent in that case may very well have learned about the Complainant’s plans from scanning the TESS database, but “Everyday Eating” is a … Read the rest