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Gerald M. Levine
Levine Samuel, LLP
130 West 42nd Street,
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New York, NY 10036
(212) 596-0851Trademark Databases
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Trademark and Domain Name News
Category Archives: Paragraph 4(c) of the Policy
Registering Trademark With Knowledge that Corresponding Domain Name is Taken
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 Acquisition date, Earlier acquired domain name, Intend to use trademark, ITU trademark application
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The Importance of Timing in Asserting Priority in a UDRP Dispute
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
Assessing “Improper Purpose” in Commencing a UDRP Proceeding
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 Dictionary words, Improper purpose, Prior existing rights, RDNH
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Disputes Between Same Parties; Different Panels, Different Results
When Panels in different cases involving the same parties rule differently the question is whether one is wrong and the other right. Or, can both be right without their awards being inconsistent? A number of commentators have pointed to two cases brought by Bloomberg Finance L.P. questioningly. In Case 1, Bloomberg Finance L.P. v. bloomberg, FA1204001440735 (Nat. Arb. Forum May 29, 2012) the Panel denied the Complaint, the effect of which leaves the domain name with the Respondent. In case 2, Bloomberg Finance L.P. v. Bloomberg Realty (India) Private Limited / Bloomberg, FA1204001439263 (Nat. Arb. Forum May 30, 2012) the Panel granted the Complaint for 14 domain name and denied two which it found were not confusingly similar … Read the rest
Date of First Use in Commerce in Application for Trademark Not Evidence
As a general rule, there can be no bad faith registration of a domain name registered prior to the existence of a trademark. For a complainant to prevail on the first requirement that it has a trademark right, the date of first use in commerce disclosed in the application must pre-date the registration of the domain name. Where the timing of a trademark is in issue complainant must do more than point to the date of first use in its application. Hidden Values, Inc. v. Spirit Marketing c/o Paul Morrissette, FA1204001437627 (Nat. Arb. Forum May 15, 2012) (KIDS DIRECTORY and). Trademark application filed 2005, registered 2010, citing a first use in commerce 1990. The domain name was registered January … Read the rest
Posted in Abusive intent, Burden of proof, Complainant "in mind", Cybersquatting / Not cybersquatting, Domain names, First to register, Para. 4(a)(iii) of the Policy, Paragraph 4(b) of the Policy, Paragraph 4(c) of the Policy, Totality of facts
Tagged Common words, different market, Domain names bad faith, First use in commerce, Trademarks and Domain Names, Wayback Machine
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