Category Archives: Para. 4(a)(i) of the Policy

Registrability of Words Standing Alone in Design Trademarks

Posted on February 15, 2013 by Gmlevine

Design trademarks combine figurative element(s) with word(s). The words may or may not be registrable standing alone. That they are or are not registrable is critical to determining confusing similarity. Non registrable terms are non-actionable because they fall into a category that cannot take on trademark status. The outcome of words disclaimed is more obvious; they cannot be used as a basis for infringement. The term “Minibar Systems” for example in Minibar North America Inc. v. Ian Musk & GEMS Global Electronic Minibar Systems AS, D2005-0035 (WIPO March 2, 2005) cannot be resuscitated as being a suggestive phrase when it is “merely” or “purely” descriptive.

Such words cannot be read as the mark, but an integral feature of it.  … Read the rest

Posted in Abusive intent, Generic/Descriptive terms, IP-Trademark, Para. 4(a)(i) of the Policy, Standing, Targeting / Not targeting, Trade names | Tagged , , , | Leave a comment

Allegations Alone are not Proof of a Trademark Right; Subsidiary Must Prove Consent

Posted on February 8, 2013 by Gmlevine

Although timing of a trademark registration is not a factor for standing it is critical in assessing bad faith. Unless complainant is able to persuasively demonstrate that its commercial persona preceded registration of the domain name the complaint must be dismissed since no amount of post-registration reputation can overcome evidence that the trademark was nonexistent at the earlier time. A variation on this principle is claimed authority by a subsidiary or division of a the trademark owner whose evidence falls short of demonstrating the relationship. The Complainant in Old Republic Home Protection Co., Inc. v. Direct Privacy ID 7F9AB, D2012-2366 (WIPO January 11, 2013) alleges a corporate relationship with the trademark owner. But the allegation is insufficient without proof.  … Read the rest

Posted in Authorized use, Para. 4(a)(i) of the Policy, Permissive use, Proof, Standing, UDRP, UDRP Rule 10(d) (evidence) | Tagged , , , , | Leave a comment

No Standing for “Intent to Use” Applications

Posted on December 4, 2012 by Gmlevine

While trademark registration on the Principal Register is prima facie proof of validity and some consideration is given to registrations on the Supplemental Register on proof of acquired distinctiveness, no right accrues to a pending trademark application. The “broad consensus under the Policy is that a trademark application alone is not sufficient to establish rights in a mark.” PRGRS, Inc. v. Pak, D2002-0077 (WIPO April 24, 2002). A certificate of registration satisfies the threshold requirement while a mere application to register a trademark confers no rights. “No such presumption arises from a pending application to register a mark.” Aspen Grove, Inc. v. Aspen Grove, D2001-0798 (WIPO October 17, 2001). Application “for a mark [as opposed to issuance of … Read the rest

Posted in Application for trademark, Burden of proof, Intent to use, Para. 4(a)(i) of the Policy, Reputation in the marketplace, Standing, Targeting / Not targeting, UDRP Rule 10(d) (evidence), UDRP Rule 3(c) | Tagged | Leave a comment

Cancelling Domain Names in the .XXX TLD Space

Posted on February 29, 2012 by Gmlevine

Abusive registration in the .xxx space is assessed under a sibling Policy to the UDRP, the Charter Eligibility Dispute Resolution Policy (CEDRP) which became effective as of September 1, 2011. Under the CEDRP the sole remedy is cancellation, paragraph 3 of Policy and 5(e) of Rules promulgated by the National Arbitration Forum. “A registered domain name in the .XXX TLD will be subject to an administrative proceeding upon submission of a complaint showing by clear and convincing evidence that the domain name in the .XXX TLD has been improperly registered or used under one or more of the circumstances in this section.” The Policy reads:

Any claim premised on non-use or improper use of a registered domain name in the

… Read the rest

Posted in Abusive intent, Para. 4(a)(i) of the Policy, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Para. 4(b)(iii) of the Policy, Unauthorized use, Unregistered trademark | Tagged , , , | 2 Comments

Multiple Users of Term Other than Trademark Owner

Posted on February 8, 2012 by Gmlevine

There have been a number of recent UDRP cases in which complainants’ trademarks are composed of letters or words that have currency for other users in the marketplace. Two, three and four letter strings, for example, are valuable names that could also be acronyms. Examples: <rmhp.com> and <tds.com>. The Panel in Rocky Mountain Health Maintenance Organization, Incorporated v. Domain Administrator / PortMedia, FA1112001418881 (Nat. Arb. Forum January 27, 2012) noted that the domain name was not exactly an acronym. The Respondent in Telephone and Data Systems, Inc. v. Protected Domain Services – Customer ID: NCR-813584 / Daniel Wang, D2011-0435 (WIPO May 10, 2011) pointed out that there are “numerous other United States trademark registrations for TDS for a … Read the rest

Posted in Common expressions, Complainant "in mind", Complex facts / Not cybersquattting, Innocent registration, Insufficiency of evidence, Para. 4(a)(i) of the Policy, Para. 4(b)(iv) of the Policy, Para. 4(c)(i) of the Policy, Targeting / Not targeting, Trademark in mind, UDRP Rule 10(d) (evidence), Unregistered trademark | Tagged , , , , | Leave a comment