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

Trademarks Composed of Elements that Include Dictionary Words

Posted on May 17, 2013 by Gmlevine

Trademarks gather strength as they ascend the classification scale. In order, fanciful, arbitrary and suggestive are at the strong end of the scale, while descriptive and generic (if they qualify for registration) are on the weak end. The registry of trademarks includes numerous well-known dictionary words used fancifully or arbitrarily – think fruit: “apple”, “blackberry” and “orange”; or common words combined such as “micro” and “soft” and “America” and “Online.” More common words used descriptively have qualified when by their presence in the marketplace they have achieved secondary meaning. Whether domain name registrants are cybersquatting on the trademark depends on a number of factors that are discussed in Imagine Solutions, Inc. v. Encapture.com, Privacy Services / Ravindra Kumar Lahoti, … Read the rest

Posted in Acttive / passive use, Complainant "in mind", Generic/Descriptive terms, Opportunism, Para. 4(a)(ii) of the Policy, Para. 4(b)(iv) of the Policy, Paragraph 4(b) of the Policy, Secondary meaning, Targeting, Timing of registration, Totality of facts, UDRP Rule 15(a), Website content | Tagged , , , , , , | Leave a comment

Similarity of Domain Name to Trademark Is Only the Beginning of the Assessment

Posted on May 2, 2013 by Gmlevine

UDRP provides remedies on proof of abusive registration of domain names. What constitutes abuse sufficient to support a remedy is something more than having a trademark that another party is using as a domain name. Initiating a proceeding on a non-actionable claim is an abuse of the Policy. What if the complainant initially believed it had a meritorious claim, and then learned from respondent’s submission that respondent had a right or legitimate interest in the domain name? This factual situation occurred in Avaya Inc. v. Avayo Electronics, FA1302001487607 (Nat. Arb. Forum April 19, 2013) where the 3-Member Panel came up with a surprising answer that (to my knowledge) has not previously been offered and which I think marks an … Read the rest

Posted in Certification, Concurrent rights, Confusing similarity, Knowledge, Likelihood of confusion, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, Similar - Not confusing, Targeting / Not targeting | Tagged , , , , , , | Leave a comment

Insufficient Evidence for Respondent’s Lack of Rights or Legitimate Interests – Not Even the Iconic Trademark Owner Is Excused From Having to Offer Proof

Posted on April 10, 2013 by Gmlevine

Just as complainants cannot prevail on the strength of their trademarks which only proves the first requirement that it has standing to maintain the proceedings, so respondents do not forfeit their domain names on default of responding to the complaint. This message continues to be lost even to the most prestigious law firms and the wisest counselors. If nothing but suppositional allegations are offered as proof for paragraphs 4(a)(ii) or 4(a)(iii) relief will be denied. Should that verdict be applied to iconic trademarks such as AOL, as it was in AOL, Inc. v. ChengshuangLi, FA1302001483339 (Nat. Arb. Forum March 26, 2013)? The Panel made the following pronouncement: the “Complainant’s entire argument” on the issue of rights or legitimate interests … Read the rest

Posted in Abusive intent, Burden of proof, Burden of proof / persuasion, Cybersquatting / Not cybersquatting, Default, Insufficiency of evidence, Intent / Tartgeting, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Reputation in the marketplace, UDRP Rule 10(d) (evidence) | Tagged , | Leave a comment

Acquiring a Non Renewed Domain Name at Auction

Posted on March 27, 2013 by Gmlevine

Registrars have a contractual duty arising out of the Registrar Accreditation Agreement (RAA) to alert domain name holders that their registrations are nearing expiration. Not surprisingly some domain name holders miss the notices. The pertinent provisions of the RAA read as follows:

3.7.5 At the conclusion of the registration period, failure by or on behalf of the Registered Name Holder to consent that the registration be renewed within the time specified in a second notice or reminder shall, in the absence of extenuating circumstances, result in cancellation of the registration by the end of the auto-renew grace period (although Registrar may choose to cancel the name earlier).
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3.7.5.4 Registrar shall provide notice to each new registrant describing the details

… Read the rest

Posted in Lapsed domain name, Opportunism, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Proof, Renewal / Re-registration | Tagged , , , , | 1 Comment

Untrue Allegations In and False Certification of Complaint: Major International Corporation Represented By Counsel

Posted on March 17, 2013 by Gmlevine

Respondents default in responding to complaints approximately 85% of the time so that if there are materially false allegations in the complaint and there is no response the untruths will likely not be picked up. When a respondent appears and challenges the truth of material allegations Complainant (and no less the attorney if complaint bears his certification) has an ethics problem. As the Panel states in The Procter & Gamble Company v. Marchex Sales, Inc., D2012-2179 (WIPO February 22, 2013) () in considering Respondent’s request for a finding of reverse domain name hijacking:

Had the Respondent failed to respond, there is a very real risk that the Panel, relying upon the 1993 International [trademark] registration [which Complainant acquired by

… Read the rest

Posted in Abusive intent, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Para. 4(c)(i) of the Policy, Priority of use, Reputation in the marketplace, Reverse domain name hijacking, Successor in interest, Targeting / Not targeting, Trademark in mind, UDRP Rule 3(b)(xiv) | Tagged , , , | Leave a comment