Category Archives: Proof

Acquiring a Non Renewed Domain Name at Auction

Posted on March 27, 2013 by Gmlevine

Registrars have a contractual duty arising out of the Registrar Accreditation Agreement (RAA) to alert domain name holders that their registrations are nearing expiration. Not surprisingly some domain name holders miss the notices. The pertinent provisions of the RAA read as follows:

3.7.5 At the conclusion of the registration period, failure by or on behalf of the Registered Name Holder to consent that the registration be renewed within the time specified in a second notice or reminder shall, in the absence of extenuating circumstances, result in cancellation of the registration by the end of the auto-renew grace period (although Registrar may choose to cancel the name earlier).
***
3.7.5.4 Registrar shall provide notice to each new registrant describing the details

… Read the rest

Posted in Lapsed domain name, Opportunism, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Proof, Renewal / Re-registration | Tagged , , , , | 1 Comment

Allegations Alone are not Proof of a Trademark Right; Subsidiary Must Prove Consent

Posted on February 8, 2013 by Gmlevine

Although timing of a trademark registration is not a factor for standing it is critical in assessing bad faith. Unless complainant is able to persuasively demonstrate that its commercial persona preceded registration of the domain name the complaint must be dismissed since no amount of post-registration reputation can overcome evidence that the trademark was nonexistent at the earlier time. A variation on this principle is claimed authority by a subsidiary or division of a the trademark owner whose evidence falls short of demonstrating the relationship. The Complainant in Old Republic Home Protection Co., Inc. v. Direct Privacy ID 7F9AB, D2012-2366 (WIPO January 11, 2013) alleges a corporate relationship with the trademark owner. But the allegation is insufficient without proof.  … Read the rest

Posted in Authorized use, Para. 4(a)(i) of the Policy, Permissive use, Proof, Standing, UDRP, UDRP Rule 10(d) (evidence) | Tagged , , , , | Leave a comment

Domain Names Composed of Random Letters and Acronymic Trademarks

Posted on November 16, 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);
})();

Domain names composed of few letters are extremely prized; the more so as the number of third parties legitimately claiming a right to them increases. The larger the number of potential claimants the less likely any one of them can prevail in a UDRP proceeding. Random letters and even acronymic trademarks are likely to be on the lower end of protectability as generic terms, with two exceptions. First, where the letters are instantly recognizable as a famous trademark – RBS for … Read the rest

Posted in Acronyms / initials / abbreviations, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, Policing trademark, Proof, Protecting IP, Targeting / Not targeting, UDRP, UDRP Rule 10(d) (evidence) | 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

Resolving Disputes in Face of Conflicting Testimony

Posted on December 23, 2011 by Gmlevine

A UDRP record is similar in some respects to a motion for summary judgment in a civil action in that each party puts forward its best case in support and opposition to the complaint. The difference is that in a civil court action a case can proceed to discovery and trial but in a UDRP proceeding the record is all there is. Credibility plays a role just as silences do. Persuasion is partly in the manner in which evidence is presented, but more importantly it is the submission or withholding of evidence that supports a party’s argument. So, offering and withholding evidence cannot fail to impress the Panel. In Fiji Rugby Union v. Webmasters Limited, D2003-0643 (WIPO December 24, … Read the rest

Posted in Credibility, Evidence, Legitimate use, Para. 4(b)(iv) of the Policy, Proof, UDRP Rule 10(d) (evidence), UDRP Rule 14(b) | Tagged , | Leave a comment