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Gerald M. Levine
Levine Samuel, LLP
130 West 42nd Street,
12th Floor
New York, NY 10036
(212) 596-0851Trademark Databases
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Trademark and Domain Name News
Category Archives: Personal name
Mixed Use (Vanity Email and PPC) of Surname Trademarks
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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
Registration “Before Notice” and Offering Bona Fide Goods or Services Good Defense to UDRP Complaint
While merely registering and holding a domain name confers no right or legitimate interest, a domain name can be legitimized if 1) “before any notice … of the dispute”, 2) respondent “has used or made demonstrable preparations to use the domain name”, and 3) “in connection with a bona fide offering of goods or services.” Paragraph 4(c)(i) of the Policy. Each of the elements must be demonstrated. It is not longevity alone that supports a respondent’s right – the real estate theory of adverse possession is not a recognized defense – but respondent’s use of the domain name in connection with a bona fide offering of goods or services may be. Each element has to be proved.
Injunctive Relief Against Domain Name Registrants for Unauthorized Registration of Personal Name
Unless personal names have achieved trademark status they are not protected under the UDRP. Report of the Second WIPO Internet Domain Name Process, The Recognition of Rights and the Use of Names In the Internet Domain Name System, dated September 3, 2001 which states: “the application of the UDRP to the protection of personal names [is authorized only] when they constitute trademarks,” Paragraph 179. Excluded are living persons whose reputations are earned out of the spotlight of commerce even though active in the figurative scrum of their businesses or professions. This rule applies however extraordinary the individual’s contribution is to business, science, politics, the professions and the academy. The WIPO Report states that it may result in an “injustice” and … Read the rest
Surname Trademarks and Rights to Corresponding Domain Names
Surnames may qualify as trademarks, but to the extent they are common (and provided that there is no intent to take advantage of the complainant or its trademark) they share with trademark owners the right to use them in domain names. Ordinarily, surnames are treated no differently than generic words. (Surnames qua surnames are not registrable as trademarks, §1052(e)(4) of the Trademark Act). Merely competing for space and attention with a trademark holder to use one’s own name for one’s own Internet presence does not rise to an infringement. A respondent has a right to a “domain name [that] reflects [his] initials [and his] … first and middle name, combined with [his] entire last name,” Modefine S.A. v. A.R. Mani… Read the rest