Category Archives: Recovering domain name

When Inactivity Rises to the Level of Bad Faith

Posted on April 13, 2012 by Gmlevine

One of the central propositions of UDRP jurisprudence is that mere assertion of bad faith is insufficient for the complainant to establish infringement of its rights. This is so even if respondent lacks rights or legitimate interests in the domain name. The Panel in Murad, Inc. v. Stacy Brock, FA1202001430865 (Nat. Arb. Forum March 31, 2012) took the unusual position of making no formal findings under the first and second elements to focus on the bad faith: “for the reasons set forth below, the Panel finds that it need not rule on this element of the Policy.” Whether or not complainant prevails on the first two elements its fate hangs on the third.

Inactivity (or the expressive oxymoron, “passive … Read the rest

Posted in Common expressions, Descriptive phrases, Domain names, Drawing inferences, ftp services, Generic/Descriptive terms, Para. 4(a)(iii) of the Policy, Parking, Passive use, Recovering domain name, UDRP Rule 10(d) (evidence) | Tagged , , , | Leave a comment

Regaining a Hijacked Domain Name

Posted on September 16, 2011 by gmlevine

“Given the human capacity for mischief in all its forms the Policy sensibly takes an open-ended approach to bad faith, listing some examples without attempting to exhaustively enumerate all its varieties,” Worldcom Exchange, Inc v. Wei.com, Inc., D2004-0955 (WIPO January 5, 2005) (<wei.com>). One of the unlisted bases of bad faith is domain name hijacking. The most recent example is Piearson Industries, Inc. d/b/a Centerfire Firearms v. Dan F / Joe Mayo, FA1107001397844 (Nat. Arb. Forum August 12, 2011). “While Respondent’s use of the disputed <centerfirefirearms.com> domain name does not fit squarely within the elements of Policy ¶ 4(b), the Panel can, and does, find evidence of bad faith registration under Policy ¶ 4(b).” citing Do The Hustle, … Read the rest

Posted in Fraudulent transfer, Para. 4(a)(ii) of the Policy, Para. 4(a)(iii) of the Policy, Paragraph 4(c) of the Policy, Recovering domain name, Targeting, Totality of facts, UDRP Rule 10(d) (evidence) | Leave a comment

Opportunistic Registration of Domain Name After Inadvertent Lapse of Renewal

Posted on March 12, 2011 by gmlevine

Some respondents believe that registering lapsed domain names establishes a possessory right – a finders keepers attitude – invulnerable to a claim of abusive registration. This explains why in VIRBAC v. PrivacyProtect.org, Mantow Tian, Preventic China Systems, Isaac Goldstein, D2011-0026 (WIPO February 23, 2011) one of the Respondents is so indignant at being accused of bad faith. The “Center received an email from Mantow Tian informing the Center [that it] will contact Chinese authorities and courts if you steal our domain name.” But the indignation is is misplaced. Inadvertent lapse in renewing a domain name has no effect on trademark holders’ rights. There is no principle of law that bars a trademark holder from recovering a lost domain name; … Read the rest

Posted in Abusive intent, Cybersquatting, Domain names, Inadvertent lapse of renewal, Opportunism, Para. 2 of the Policy, Recovering domain name | Leave a comment

Denying Renewal and Reopening of a Closed Case

Posted on June 21, 2010 by gmlevine

A number of panelists have expressly granted permission to complainants or paved their way to refiling complaints on grounds that would not ordinarily be permitted under the test announced in Grove Broadcasting Co. Ltd. v. Telesystems Commc’ns Ltd. D2000-0703 (WIPO November 10, 2000). The Panel in Umpqua Investments, Inc. v. Private Registrations Aktien Gesellschaft, FA1005001324718 (Nat. Arb. Forum June 15, 2010) for example denied the complaint with the surprising ruling that it was “without prejudice” without any discernible basis for inviting the Complainant to refile. The question is, Under what circumstances and on what proof is a complainant permitted to renew its claim? “Without prejudice” is arguably appropriate for certain situations, where the trademark is being currently contested … Read the rest

Posted in Cybersquatting, IP-Trademark, Para. 4(a)(ii) of the Policy, Para. 4(c)(i) of the Policy, Recovering domain name | Leave a comment

Recovering Domain Name After Failing to Renew Registration

Posted on June 18, 2010 by gmlevine

Domain names and trademarks alike can be lost by termination or cancellation if registrations are not renewed (UDRP) or affirmed (Trademark Act) and once lost are retrievable, if at all, with effort. Under U.S. law, a trademark “shall be canceled” (15 U.S.C. 1058(a)) unless the registrant takes affirmative steps between the 5th and 6th years to maintain its currency by filing “an affidavit setting forth those goods or services recited in the registration on or in connection with which the mark is in use in commerce” (Id. 1058(b)(1)). For domain names, timing of renewal depends on the number of years for which they were registered and while registrars have notice procedures in place to forewarn of imminent termination lapses continue … Read the rest

Posted in IP-Trademark, Para. 4(a)(i) of the Policy, Para. 4(a)(iii) of the Policy, Para. 4(c)(i) of the Policy, Recovering domain name, Targeting | Leave a comment