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

Unauthorized But Legally Permissive 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 & … 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

Parties in Same Business and Operating in the Same Geographical Area

Posted on January 24, 2012 by Gmlevine

Distance is not only geographical and temporal but also measured by product or service offerings. The principle underlying temporal distance is that the respondent could not have registered the domain name in bad faith if the trademark had not then come into existence. Subsequent bad faith use (except in the view of panelists who argue for “retrospective” bad faith) is not grounds for forfeiture of the domain name under UDRP. The greater the distance of all three combined the less likely that the complainant can prevail on the bad faith element, which is the ultimate test.

Geographical distance by itself does not favor the respondent’s good faith claim, but temporal distance (acquiring the domain name prior to existence of the … Read the rest

Posted in Denial of knowledge, Geographic distance, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Para. 4(c)(i) of the Policy, Prima facie case, Totality of facts, Website content | Tagged , , , , | 1 Comment

Temporary and Inadvertent Infringing Use of Domain Name

Posted on January 10, 2012 by Gmlevine

Complainants of trademarks on the lower end of the classification scale have a greater burden to prove bad faith registration even where respondent is in the domain name business and there is proof of temporary infringing use of the domain name. “The number of other persons or entities holding identical if non-competing marks and the number of other users with rights in [a] name are clear evidence of the limited ownership claims of the Complainant.” Electronic Arts Inc. v. Abstract Holdings International LTD / Sherene Blackett, FA1111001415905 (Nat. Arb. Forum January 4, 2012) disputing over <ssx.com>. The Respondent in this case is a high volume registrant. It acquired the disputed domain name as part of a portfolio of three … Read the rest

Posted in High volume registrant, Links to competitive goods or services, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, Parking, Pay-per-click, Policing trademark, Targeting / Not targeting, Transfer of domain name | Tagged , | Leave a comment

Legitimate Noncommercial or Fair Use of Domain Name Identical or Confusingly Similar to Trademark

Posted on January 5, 2012 by Gmlevine

Lego is one of those trademarks instantly recognizable in the marketplace. The number of UDRP proceedings against Lego infringers runs into the dozens (I’m probably underestimating). Here is a baker’s dozen decided in December 2011: <legodiscounter.com>, <legoninjagofiretemple.com>, <legoverhuur.com>, <legoland florida.com>, <legolandorlando.com>, <legosoft.com>, <legowatches.org>, <lego-fan.net>, <legomen.com>, <legostarwarsgames.org>, <legoharrypotterquidditch match.net>, <legoarmory.com>, <legocitycorner.com>. How can a respondent escape losing a “lego” domain name? The issue in the first instance is how the domain is being used and the purpose for which it was registered. There has to be a match. Even with famous trademarks, complainant can be defeated if the purpose for the domain name is “legitimate noncommmercial” and its use fair under paragraph 4(c)(iii) of the Policy. Complainant was unsuccessful for <legoworkshop.com> … Read the rest

Posted in Abusive intent, Commercial gain, Fair use, Knowledge, Legitimate use, Likelihood of confusion, Noncommercial, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Para. 4(c)(iii) of the Policy | Tagged , , | Leave a comment

Respondent’s Right or Legitimate Interest Trumps Complainant’s Trademark Right

Posted on January 3, 2012 by Gmlevine

There have been a number of cases lately in which complainant has either failed to prove a prima facie case or been unable to overcome respondent’s evidence of its right or legitimate interest in the disputed domain name. Respondent’s use of the domain name is a critical factor, but so too is the trademark. Longevity and recognition in the marketplace cannot trump a respondent’s right or legitimate interest unless it fails to offer affirmative evidence of its choice.

A respondent’s loss of its trademark for failure to file a declaration of use between the 5th and 6th years of registration is not fatal to either its right or legitimate interest in a domain name. Stonz Wear, Inc. v. Framez l-Wear… Read the rest

Posted in Defenses, Good faith registration, Insufficiency of evidence, Para. 4(a)(ii) of the Policy, Para. 4(c)(ii) of the Policy, Prima facie case, UDRP Rule 10(d) (evidence), UDRP Rule 15(a) | Tagged , , , , | Leave a comment