Category Archives: Legitimate use

Demonstrable Preparations for Use Before Notice

Posted on March 7, 2013 by Gmlevine

The 3-member Panel in Cheezburger, Inc. v. WeKnowMemes LLC (c/o Dynadot Privacy), D2012-2452 (WIPO February 19, 2013) considered confusing similarity between KNOW YOUR MEME and <weknowthemes.com> “a close question … [b]ut the overall impression is sufficiently similar, especially for the Domain Name used for a competing website, that the Panel concludes the first Policy element has been satisfied.” While this met the test for standing, it was insufficient in light of Respondent’s rebuttal evidence that before notice it had established a web based service. It is a complainant’s burden to demonstrate that respondent chose the domain name with the intention of taking advantage of the trademark.

Where a domain name is a phrase composed of dictionary words that is … Read the rest

Posted in Acttive / passive use, Burden of proof / persuasion, Common expressions, Cybersquatting / Not cybersquatting, Evidence, Generic/Descriptive terms, Legitimate use, Opportunism, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, UDRP, Website content, Website services | Tagged , | Leave a comment

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

Registration “Before Notice” and Offering Bona Fide Goods or Services Good Defense to UDRP Complaint

Posted on October 18, 2012 by Gmlevine

While merely registering and holding a domain name confers no right or legitimate interest, a domain name can be legitimized if 1) “before any notice … of the dispute”, 2) respondent “has used or made demonstrable preparations to use the domain name”, and 3) “in connection with a bona fide offering of goods or services.” Paragraph 4(c)(i) of the Policy. Each of the elements must be demonstrated. It is not longevity alone that supports a respondent’s right – the real estate theory of adverse possession is not a recognized defense – but respondent’s use of the domain name in connection with a bona fide offering of goods or services may be. Each element has to be proved.

In Cerruti 1881 … Read the rest

Posted in Abusive intent, Cease and desist notice, Complainant "in mind", Credibility, Legitimate use, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, Para. 4(c)(ii) of the Policy, Personal name, Policing trademark | Tagged , , | Leave a comment

Acquired Distinctiveness Through 5 or More Years of Use

Posted on May 14, 2012 by Gmlevine

Words and phrases in common use are attractive equally to purveyors and domainers. That one has a trademark does not disqualify the other from registering an identical or confusingly similar composition as long as proof fails to demonstrate bad faith. While registration confers distinctiveness, trademarks on the lower rung acquire this virtue over time. Trademarks qualified for registration under Section 2(f) of the Lanham Act (15 U.S.C. §1052(f)) for example are concededly generic or descriptive. This being the case, it is equally true that as a trademark descends in rank it has less protection. PetsMed Express Inc. v. JLB a/k/a Joseph Brinton, D2009-0179 (WIPO April 6, 2009) (“The Policy was not intended to permit a party who elects to … Read the rest

Posted in Abusive intent, Affixes / suffixes, Common expressions, Cybersquatting, Generic/Descriptive terms, Legitimate use, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Para. 4(c)(i) of the Policy, Targeting / Not targeting | Tagged , , | Leave a comment