Category Archives: Para. 4(c)(i) 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

Multiple Users of Term Other than Trademark Owner

Posted on February 8, 2012 by Gmlevine

There have been a number of recent UDRP cases in which complainants’ trademarks are composed of letters or words that have currency for other users in the marketplace. Two, three and four letter strings, for example, are valuable names that could also be acronyms. Examples: <rmhp.com> and <tds.com>. The Panel in Rocky Mountain Health Maintenance Organization, Incorporated v. Domain Administrator / PortMedia, FA1112001418881 (Nat. Arb. Forum January 27, 2012) noted that the domain name was not exactly an acronym. The Respondent in Telephone and Data Systems, Inc. v. Protected Domain Services – Customer ID: NCR-813584 / Daniel Wang, D2011-0435 (WIPO May 10, 2011) pointed out that there are “numerous other United States trademark registrations for TDS for a … Read the rest

Posted in Common expressions, Complainant "in mind", Complex facts / Not cybersquattting, Innocent registration, Insufficiency of evidence, Para. 4(a)(i) of the Policy, Para. 4(b)(iv) of the Policy, Para. 4(c)(i) of the Policy, Targeting / Not targeting, Trademark in mind, UDRP Rule 10(d) (evidence), Unregistered trademark | 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

Instances of Registration and Use Outside Scope of the Policy

Posted on December 15, 2011 by Gmlevine

The Policy’s scope is limited to “‘abusive registrations’ made with bad faith intent to profit commercially from others’ trademarks.” Second Staff Report on Implementation Documents for the Uniform Dispute Resolution Policy, 4.1(c). The Report continues that “the adopted policy leaves the resolution of disputes to the courts (or arbitrators where agreed by the parties) and calls for registrars not to disturb a registration until those courts decide.” Where there is no intent “to profit commercially from others’ trademarks” there can be no bad faith. Claims for breaches of contract and fiduciary duty, for example, that require the Panel to delve into the parties’ legal relations are generally outside the scope of the Policy.

In Vans, Inc. v. Military and Rescue … Read the rest

Posted in Abusive intent, Acquiescence, Anticybersquatting Consumer Protection Act, Initial interest confusion, Para. 4(c)(i) of the Policy, UDRP Rule 10(d) (evidence), Within / Outside Scope | Tagged , | Leave a comment