Category Archives: Paragraph 4(b) of the Policy

Trademarks Composed of Elements that Include Dictionary Words

Posted on May 17, 2013 by Gmlevine

Trademarks gather strength as they ascend the classification scale. In order, fanciful, arbitrary and suggestive are at the strong end of the scale, while descriptive and generic (if they qualify for registration) are on the weak end. The registry of trademarks includes numerous well-known dictionary words used fancifully or arbitrarily – think fruit: “apple”, “blackberry” and “orange”; or common words combined such as “micro” and “soft” and “America” and “Online.” More common words used descriptively have qualified when by their presence in the marketplace they have achieved secondary meaning. Whether domain name registrants are cybersquatting on the trademark depends on a number of factors that are discussed in Imagine Solutions, Inc. v. Encapture.com, Privacy Services / Ravindra Kumar Lahoti, … Read the rest

Posted in Acttive / passive use, Complainant "in mind", Generic/Descriptive terms, Opportunism, Para. 4(a)(ii) of the Policy, Para. 4(b)(iv) of the Policy, Paragraph 4(b) of the Policy, Secondary meaning, Targeting, Timing of registration, Totality of facts, UDRP Rule 15(a), Website content | 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

The Importance of Timing in Asserting Priority in a UDRP Dispute

Posted on August 29, 2012 by Gmlevine

Timing is a critical factor in determining whether a complainant satisfies its first and third UDRP requirements. When parties’ acquire their respective rights ultimately determines whether or not the complainant has standing to maintain an administrative proceeding and if it does whether it can prove bad faith registration. So, for example, an application to register a trademark is only proof that the complainant has filed an application which explains why an application alone is insufficient for standing. If the complainant also alleges a common law right it must demonstrate that the trademark has acquired distinctiveness associated with the complainant or its goods or services.

The Panel in Digital Ceramic Systems Limited v. Baltea SRL, D2012-1198 (WIPO July 24, 2012) … Read the rest

Posted in Abusive intent, Burden of proof, Common expressions, Descriptive phrases, Paragraph 4(b) of the Policy, Paragraph 4(c) of the Policy, Timing of registration | Tagged , , , | Leave a comment

Assessing “Improper Purpose” in Commencing a UDRP Proceeding

Posted on August 16, 2012 by Gmlevine

The 3-member Panel in Albir Hills Resort, S.A. v. Telepathy, Inc., D2012-0997 (WIPO July 19, 2012) makes an interesting comment that is central to its finding against Complainant of reverse domain name hijacking:

The Panel considers that the Complainant is represented by an attorney who should have appreciated that the Complaint could not succeed in the present proceeding since the disputed domain name was registered by the Respondent eight years prior to filing the trademark applications for SHA.

I’m underlining twice-over the phrase “represented by counsel who should have [known better].” Pro se complainants may be excused for not appreciating the finer points, and been excused. In commencing a UDRP proceeding the complainant is required to certify,“that the information … Read the rest

Posted in Burden of proof / persuasion, Complainant "in mind", Cybersquatting, Domain names, First to register, Later acquired trademark rights, Paragraph 4(b) of the Policy, Paragraph 4(c) of the Policy, Proof, Reverse domain name hijacking | Tagged , , , | Leave a comment

Failure to Resolve Uncertainty Undermines Complainant’s Claim

Posted on August 2, 2012 by Gmlevine

To “oogle” (if “oogle” means “ogle”) is one thing, to “google” another. “Despite the Panel’s extreme suspicions about [the Respondent’s] explanation [for registering <oogle.com>]” it denied Google Inc.’s complaint in Google Inc. v. Blue Arctic LLC, FA1206001447355 (Nat. Arb. Forum July 25, 2012). Why? The first problem in assessing whether a domain name is identical or confusingly similar to a trademark is its composition. Respondent claims “oogle” is a variant of “ogle” which is a dictionary word. (My dictionary does not show “oogle” as a variant of “ogle”, which perhaps explains the Panel’s “extreme suspicion” about the Respondent’s explanation.) GOOGLE is an arbitrary sign; but “oogle” is not “google”, so it could arguably be similar but not confusingly so. … Read the rest

Posted in Insufficiency of evidence, Opportunism, Para. 4(a)(ii) of the Policy, Paragraph 4(b) of the Policy, Targeting / Not targeting, Typosquatting, UDRP Rule 10(d) (evidence), UDRP Rule 14 | Tagged , , , , | Leave a comment