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

Credibility and Reverse Domain Name Hijacking

Posted on February 1, 2012 by Gmlevine

The complainant certifies in commencing the UDRP proceeding,“that the information contained in th[e] Complaint is to the best of [its] knowledge complete and accurate [and] that th[e] Complaint is not being presented for any improper purpose, such as to harass [the respondent].” Paragraph 3(b)(xiv) of the Rules of the Policy. Respondent has the burden of proving that the “Complaint is … being presented for any improper purpose.” It has to establish the improper purpose affirmatively rather than negatively, that is it requires proof of an intentional act or conduct so lacking in circumspection and discretion that no other inference can be drawn except that complainant intended “to deprive a registered domain-name holder of a domain name.” However, “mere lack of … Read the rest

Posted in Abusive intent, Commercial gain, Credibility, Knowledge, Para. 4(a)(iii) of the Policy, Para. 4(b)(i) of the Policy, Para. 4(b)(iv) of the Policy, Reverse domain name hijacking | 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

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

Giving Parties Benefit of the Doubt: Sufficiency of Evidence

Posted on December 28, 2011 by Gmlevine

Giving a party the benefit of the doubt is really shorthand for insufficiency of the other’s evidence. In the first instance, complainant has the burden for establishing its case for all three elements, but as it proceeds from element to element its burden grows heavier. Proof that the domain name is identical or confusingly similar to a trademark in which it has a right is a low bar. Uncertainty whether a domain name is confusingly similar or similar but not confusing generally favors the complainant, particularly if the record favors the respondent. Element two, that respondent lacks rights or legitimate interests is heavier but complainant only has to establish a prima facie case, which is essentially a showing that there … Read the rest

Posted in Benefit of the doubt, Confusing similarity, Defenses, Insufficiency of evidence, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Similar - Not confusing | Tagged , , , , , | Leave a comment

Protection of Mark as One of a Family of Marks

Posted on December 13, 2011 by Gmlevine

As a general rule, marks that share a common characteristic or dominant element can receive protection as one of a family of marks. U.S. federal courts have explained that “[t]he family of marks doctrine is important because it provides that a likelihood of confusion can exist even though a junior user’s mark may not be significantly close to any one member of a senior user’s family of marks” and that “[t]he key to a finding that a family of marks exists is a recognition among the purchasing public that the family “surname” — i.e., the element common to all the marks — is indicative of a common origin of the goods.” Victoria’s Secret Stores Brand Management, Inc. v. SHC, … Read the rest

Posted in Burden of proof, Legitimate use, Para. 4(a)(iii) of the Policy, Para. 4(c)(i) of the Policy, Protecting IP, Shared interest in trademark, Targeting / Not targeting | Tagged | 1 Comment