Category Archives: Pay-per-click

Mixed Use (Vanity Email and PPC) of Surname Trademarks

Posted on November 25, 2012 by Gmlevine

var _gaq = _gaq || [];
_gaq.push(['_setAccount', 'UA-11310882-1']);
_gaq.push(['_trackPageview']);

(function() {
var ga = document.createElement(‘script’); ga.type = ‘text/javascript’; ga.async = true;
ga.src = (‘https:’ == document.location.protocol ? ‘https://ssl’ : ‘http://www’) + ‘.google-analytics.com/ga.js’;
var s = document.getElementsByTagName(‘script’)[0]; s.parentNode.insertBefore(ga, s);
})();

Registering surnames for operating a vanity email service is a legitimate business model. The problem comes when the trademark is well-known or famous and respondent also deploys the domain name for an advertising website. Tucows.com Co. is at the center of this kind of dispute. It has succeeded where the use is consistent with the model – Ancien Restaurant Chartier v. Tucows.com Co., D2008-0272 (WIPO May 6, 2008); Markel Corporation. v. Tucows.com Co., D2007-1750 (WIPO June 5, 2008)– and … Read the rest

Posted in Abusive intent, Advertising, Cybersquatting, Para. 4(a)(ii) of the Policy, Para. 4(b)(iv) of the Policy, Pay-per-click, Personal name, Surname, Suspension / termination, Vanity e-mail | Tagged , , | Leave a comment

Offer to Purchase vs. Counter Offer

Posted on November 4, 2012 by Gmlevine

It makes a difference which party initiates a negotiation to sell or purchase a disputed domain name. In SIX Group AG v. Xedoc Holding SA, D2012-1548 (WIPO October 11, 2012) the Complainant’s cause for complaint concerned Respondent’s redirected use of as a pornographic website . But, “six” is a weak mark: “there is extensive third party use of the term ‘six’, both as trade marks and as domain names, and that it cannot by any stretch of the imagination be considered famous or exclusively associated with the Complainant.” The question of “rights or legitimate interests” in a domain name identical or confusingly similar to a trademark (however weak it may be) depends on use only if there is evidence … Read the rest

Posted in bad faith use, Burden of proof / persuasion, Complainant "in mind", Cybersquatting / Not cybersquatting, Defenses, Diverting to another website, Legitimate use, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, Pay-per-click, Pornography, Targeting, 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

Good Faith in Registering Common Words and Phrases Exploited for Their Generic Meanings

Posted on May 13, 2011 by gmlevine

It is not illegitimate to use domain names for pay-per-click revenue. According to the WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Second Edition, Para. 2.6: “Panels have generally recognized that use of a domain name to post parking and landing pages or pay-per-click [PPC] links may be permissible in some circumstances, but would not of itself confer rights or legitimate interests arising from a ‘bona fide offering of goods or services’ or from ‘legitimate non-commercial or fair use’ of the domain name, especially where resulting in a connection to goods or services competitive with those of the rights holder.”

The legitimacy issue is surveyed by two 3-member Panels involving the same respondent. Skycam, Inc. v. Administrator, Domain … Read the rest

Posted in Common expressions, Descriptive phrases, Diverting to another website, Generic/Descriptive terms, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Pay-per-click, Targeting / Not targeting, UDRP Rule 10(d) (evidence) | Leave a comment