Category Archives: Nominative fair use

Distinguishing “Unfair” Commercial and Nominative Fair Use

Posted on September 14, 2012 by Gmlevine

Nominative use of a trademark is permissible when it is fair. It is fair when the domain name identifies the respondent’s business rather than competing with the trademark owner. It is commercial by definition. Confusion is not a disqualification otherwise there could be no nominative use, but it can be minimized through disclaimer. Besides, Panels have distinguished proper and improper confusion. Where the domain name is properly used confusion is not a determinative factor. The difficulty is in accurately parsing the facts. Confusion is improper where the choice violates one or more of the provisions of Paragraph 4(b). An illustration of this is Waterlefe Community Development District and Waterlefe Master Property Owners Association, Inc. v. Roy Hunter, FA1207001455368 (Nat. … Read the rest

Posted in Intent / Tartgeting, Nominative fair use, Para. 4(c)(i) of the Policy, Para. 4(c)(iii) of the Policy, Paragraph 3(c) of the Policy, Targeting / Not targeting, Unauthorized use | Tagged , | Leave a comment

Unauthorized But Legally Permissible Use of Trademark

Posted on February 22, 2012 by Gmlevine

A respondent acquires no right or legitimate interest in a domain name that incorporates a trademark by registering or renewing it. Nokia Corporation v. Nokia Ringtones & Logos Hotline, D2001-1101 (WIPO October 18, 2001) (“[Respondents] only have a right to the domain name … if Complainant had specifically granted that right.”) Respondents succeed, however, where the trademark compositions they use – in noun or adjectival phrases – truthfully convey what the names promise. A respondent’s choice of a domain name incorporating a trademark for the purpose of identifying its business rather than competing with the owner does not require the owner’s authorization. Adaptive Molecular Technologies, Inc. v. Woodward, D2000-0006 (February 28, 2000); Giddings & Lewis LLC v. McKean… Read the rest

Posted in Nominative fair use, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, Para. 4(c)(iii) of the Policy, Paragraph 3(c) of the Policy, Permissive use, Reseller / Distributor, Shared interest in trademark, Unauthorized use | Tagged , , | Leave a comment

The Penalty of Fame: Fans and Adoration

Posted on September 30, 2011 by gmlevine

When it comes to fan sites there are two views, the tolerant and the intolerant. The intolerant is illustrated in Tom Welling v. Kenneth Gold, FA1106001393893 (Nat. Arb. Forum July 29, 2011): “Here, the Respondent has used the Complainant’s name without any adornment in a domain name which gives rise to a website. It does not matter that the website is a ‘fan site’. The Panel need not enquire whether the Respondent’s motivation is commercial or noncommercial, nor whether he does or does not receive monetary compensation.” The tolerant is illustrated in Ms. Stefani Germanotta v. oranges arecool XD, FA1108001403808 (Nat. Arb. Forum September 21, 2011). It would be interesting to investigate the respective panelists for national temperament … Read the rest

Posted in Abusive intent, Celebrities, Fan club, Legitimate use, Nominative fair use, Noncommercial, Para. 4(c)(iii) of the Policy, Unregistered trademark | Leave a comment

Incorporating a Well Known Trademark Plus Distinguishing Suffix in Domain Name

Posted on November 18, 2010 by gmlevine

The Panel noted about Wal-Mart Stores, Inc. v. Sergio Cabrera, FA1008001344053 (Nat. Arb. Forum November 8, 2010) that is was an “extremely rare case.” The Complainant requested that the Panel issue an order to transfer registration of <walmartvendor.com>. The addition of the generic term “vendor” does not (the Complainant alleges) create a name distinctive from the trademark. However, the Panel held that “[w]hile Respondent … is not a reseller, he does operate a bona fide business that relates exclusively to consulting services in support of vendors who want to do business with Complainant.” Nominative fair use is not mentioned in Wal-Mart Stores, but is clearly the underlying theory in denying the complaint. The Respondent argued that his use … Read the rest

Posted in Lanham Act, Nominative fair use, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, Shifting burden of proof, UDRP | Leave a comment

Initial Interest Confusion, Basis for Abusive Registration

Posted on October 29, 2010 by gmlevine

Panels use the phrase “initial interest confusion” in two contexts: “[1] confusion of authorship upon reading the content of a website and [2] confusion of an Internet user who is seeking the mark owner’s website but is attracted to the alternative website by its similarity (in this case, identity) with a recognized mark,” Justice for Children v. R neetso / Robert W. O’Steen, D2004-0175 (WIPO June 4, 2004). The term derives from US trademark case law, although as noted in a recent decision in the High Court of Justice, Chancery Division (citing cases from most of the Circuit Courts of Appeal) , OCH-Ziff Management Europe Limited v. OCH Capital LLP, [2010] EWHC 2599 (Ch) it “remains both controversial … Read the rest

Posted in Abusive intent, Initial interest confusion, Nominative fair use, Para. 4(a)(iii) of the Policy, Para. 4(b)(iv) of the Policy, Prima facie case, Targeting | Leave a comment