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

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

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

Use in Bad Faith Alone Is Insufficient to Prove Cybersqatting

Posted on January 17, 2013 by Gmlevine

I have pointed out in earlier Notes that the Uniform Domain Name Resolution Policy (UDRP) and the Anticybersquatting Protection Act (ACPA) are constructed on different models for proof of cybersquatting. The UDRP requires proof of bad faith in the conjunctive; while the standard demanded under the ACPA is either registration or use in bad faith. There are federal cases in which complainant trademark owner has subsequently prevailed on use in bad faith even where defendant registered the domain name in good faith. Under UDRP use in bad faith may support (inferentially) registration in bad faith, but only if the facts align for proof of targeting, but not otherwise. Where complainant trademark owner admits it authorized respondent to register the disputed … Read the rest

Posted in Abusive intent, Acquiescence, Anticybersquatting Consumer Protection Act, Cybersquatting / Not cybersquatting, Drawing inferences, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Post termination of contract | Tagged , , | Leave a comment