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

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

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

Demonstrable Preparations for Use Before Notice

Posted on March 7, 2013 by Gmlevine

The 3-member Panel in Cheezburger, Inc. v. WeKnowMemes LLC (c/o Dynadot Privacy), D2012-2452 (WIPO February 19, 2013) considered confusing similarity between KNOW YOUR MEME and <weknowthemes.com> “a close question … [b]ut the overall impression is sufficiently similar, especially for the Domain Name used for a competing website, that the Panel concludes the first Policy element has been satisfied.” While this met the test for standing, it was insufficient in light of Respondent’s rebuttal evidence that before notice it had established a web based service. It is a complainant’s burden to demonstrate that respondent chose the domain name with the intention of taking advantage of the trademark.

Where a domain name is a phrase composed of dictionary words that is … Read the rest

Posted in Acttive / passive use, Burden of proof / persuasion, Common expressions, Cybersquatting / Not cybersquatting, Evidence, Generic/Descriptive terms, Legitimate use, Opportunism, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, UDRP, Website content, Website services | Tagged , | Leave a comment

Recovering Lapsed Domain Names

Posted on February 27, 2013 by Gmlevine

For a complainant to succeed in recapturing a lapsed domain name it must both anticipate and overcome respondent’s rebuttal that it has rights or legitimate interests in the domain name. To fail on the prima facie case is to fail utterly because failure ends the case. Geographic proximity may make a difference in the assessment as does the relative strength or weakness of the trademark, but these factors are not alone sufficient against a respondent’s persuasive explanation for choosing the lapsed domain name. This is true even where parties presently compete if there are intervening circumstances favoring respondent. An example of complainant’s challenge, how difficult it can be, is illustrated in PFIP, LLC v. Blast Fitness Group, LLC / Thomas … Read the rest

Posted in Abusive intent, Burden of proof / persuasion, Common law protection, Cybersquatting / Not cybersquatting, Descriptive phrases, Inadvertent lapse of renewal, Opportunism, Para. 4(b)(iv) of the Policy, Para. 4(c)(i) of the Policy, Timing of registration, Unregistered trademark | Tagged , , | Leave a comment

Registering Trademark With Knowledge that Corresponding Domain Name is Taken

Posted on January 3, 2013 by Gmlevine

There is not an available, corresponding domain name for every trademark so it would seem prudential for a party before it becomes invested in what it regards as a desirable moniker to research the Whois database before filing its trademark application. The domain name should be purchased before application to avoid the frustration of learning thereafter that it has legitimately been registered by someone else.

The issue is illustrated in three cases from 2009 and 2010. In Success Bank v. ZootGraphics c/o Ira Zoot, FA0904001259918 (Nat. Arb. Forum June 29, 2009) the Complainant argued that it had a superior right to because it owned the trademark and because “ZootGraphics does not own any state or federal trademarks including the … Read the rest

Posted in Abusive intent, Application for trademark, Later acquired trademark rights, Para. 4(a)(iii) of the Policy, Para. 4(c)(i) of the Policy, Paragraph 4(b) of the Policy, Paragraph 4(c) of the Policy, Policing trademark, Protecting IP, Registrion and renewal, Renewal / Re-registration, Targeting / Not targeting | Tagged , , , | Leave a comment